The whispers have been incessant since the announcement of the Bilateral Patent Prosecution Highway (PPH) Programme between the Indian Patent Office (IPO) and the Japan Patent Office (JPO), which commenced officially on November 21, 2019, by signing a Joint Statement of Intent (JSOI) to this effect in New Delhi. While aspiring applicants were flabbergasted on this homecoming move of the IPO the main question that remained in their minds was how this scheme would function. Clarifying the confusion, the Indian Patent Office (IPO) released the guidelines on November 29, 2019. These procedure guidelines mention the procedures that applicants need to follow while requesting for expedited examination under the PPH pilot program. Under this scheme, there will be two offices. One is the Office of Earlier Examination (OEE) and the other is the Office of Later Examination (OLE).

It is pertinent to note that both Offices, IPO and JPO, will start accepting PPH requests from December 5, 2019. The number of requests for the same in each Office will be limited to 100 cases per year. The first Office to reach 100 PPH requests first will notify the other Office via email of the same, which will then be notified on the official websites of the respective offices. The IPO will limit the number of requests for the PPH made by the same applicant per year from time to time and may also consult on the number of requests per applicant, as and when the need arises. An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year and this number will be reviewed after March 31, 2020.

The guidelines are divided into five chapters numbered as follows:

  1. Chapter 1– General conditions of IPO-JPO PPH
  2. Chapter 2– Requirements (containing the common requirements and Office specific requirements)
  3. Chapter 3– Documents to be submitted (at each of the Offices)
  4. Chapter 4– Procedure for the expedited examination under the PPH pilot program (the common procedure and Office specific procedures)
  5. Chapter 5– Information for Participation in the Patent Prosecution Highway (PPH) Pilot Program

Chapter 1 mentions the most common and basic aspect ranging from the duration of the programme to the termination of the programme. Following this, Chapter 2, one of the most important and essential chapter, deals with the requirements to the PPH. There are three types of requirements- the Common Requirements, IPO requirements and JPO requirements. It also lists out the ‘Office Actions’, which is the most important element of the entire PPH scheme and is summarized as follows:

S.No. IPO JPO
1. Examination reports Decision to Grant a Patent
2. Grant of Patent without hearing Notification of Reasons for Refusal (only when patentable/allowable claims are specified)
3. Controller’s decision to Grant a Patent after hearing Decision of Refusal (only when patentable/allowable claims are specified)
4. Controller’s decision on Review Petition Appeal Decision
5. Controller’s decision on the direction of Appellate Authority  

Chapter 3 mentions the documents to be submitted at each of the Offices. It is material to note that English is acceptable as translation language by both Offices, while the IPO demands a self-certification of the translations. Broadly put, the documents are:

  1. Copies of all office actions (which are relevant to substantial examination for patentability in the OEE) which were issued for the corresponding application by the OEE, translations of them.
  2. Copies of all claims determined to be patentable/allowable by the OEE and translations of them.
  3. Copies of references cited by the OEE examiner.
  4. Claim correspondence table

Chapter 4 deals with the procedure that will be followed in both offices especially in the case where the requirements outlined in the preceding chapters are not met or there exists any defect. Both Offices issue a notification to the applicant stating whether the application has been granted a special status or if any defects are prevalent. While both the offices permit the correction of these defects, the IPO has imposed a deadline of 30 days whereas the JPO allows it any time- prior to the issuance of the notification. Upon correction, notification of special status is issued. However, the IPO, upon scrutiny finds that the defects are still existent then, the applicant is notified otherwise and is disallowed from making a PPH request again. In contrast, the JPO permits another PPH request, in a renewed request for participation, even if the applicant is notified otherwise.

Finally, Chapter 5 contains a specimen document of the information form which is more like an application form which mentions some basic information details about the patent application.

While the guidelines have clarified confused minds of budding inventors and striving applicants, actual clarity can be sought only upon implementation of the scheme, which must be in spirit and not just in writing.

This article is written by Adyasree Prakriti.

 

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