The PPH programme was announced to considerable interest and one persistent question: how would it actually work? The Indian Patent Office answered on 29 November 2019, days before requests opened — and the first round showed how much the detail matters.
The framework
The bilateral Patent Prosecution Highway programme between the Indian Patent Office and the Japan Patent Office commenced officially on 21 November 2019 with a Joint Statement of Intent signed in New Delhi. The guidelines followed on 29 November, setting out the procedure for requesting expedited examination under the pilot.
The scheme runs between two offices: the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE).
The caps
Both offices began accepting requests from 5 December 2019, with each limited to 100 cases per year. Whichever office reached 100 first would notify the other by email, with notice then published on both websites.
The IPO also capped requests per applicant: no applicant, alone or jointly, could file more than 10 PPH requests per year, subject to review after 31 March 2020.
The five chapters
Chapter 1 — General conditions, from the duration of the programme to its termination.
Chapter 2 — Requirements, in three parts: common requirements, IPO requirements and JPO requirements. It also lists the qualifying office actions, which are the operative element of the scheme:
| IPO | JPO |
|---|---|
| Examination reports | Decision to Grant a Patent |
| Grant of patent without hearing | Notification of Reasons for Refusal (only where patentable claims are specified) |
| Controller’s decision to grant after hearing | Decision of Refusal (only where patentable claims are specified) |
| Controller’s decision on review petition | Appeal decision |
| Controller’s decision on direction of appellate authority |
Chapter 3 — Documents. English is accepted as the translation language by both offices, with the IPO requiring self-certification of translations. Broadly:
- copies of all office actions relevant to substantive examination issued by the OEE for the corresponding application, with translations;
- copies of all claims determined patentable by the OEE, with translations;
- copies of references cited by the OEE examiner; and
- a claim correspondence table.
Chapter 4 — Procedure, particularly where requirements are unmet or defects exist. Both offices notify the applicant whether special status has been granted or defects are present. Both permit correction — but the IPO imposes a 30-day deadline, while the JPO allows correction any time before notification issues. On correction, notification of special status follows. If the IPO finds defects persist, the applicant is notified and barred from making a further PPH request; the JPO permits a renewed request in the same circumstances.
Chapter 5 — the information form, essentially an application form capturing basic details.
What the first round showed
On 25 February 2020, IP India reported on the first 100 requests received from 5 December 2019: 56 were accepted, with applicants permitted to file for expedited examination on Form 18A. 44 were found ineligible under the guidelines, and the IPO reopened for a further 44 requests from 9 March 2020.
That is the most useful figure in this whole note. Nearly half the requests in the first round failed on eligibility — and given the IPO’s stricter posture on defects, a rejected request is not merely delayed but barred. The documentation requirements in Chapter 3, and the 30-day correction window, are where applications succeed or fail.
Since then
The pilot was extended beyond its initial term, and the caps have been revised as the programme matured. Verify the current limits, eligibility and documentation requirements with the IPO before preparing a request — those figures were set for a pilot and were expressly subject to review.
The guidelines clarified much for applicants, though as with any scheme, real clarity comes with implementation — in spirit, not merely in writing.
The takeaways
- Qualifying office actions are the gateway — not every communication counts.
- The IPO allows 30 days to correct defects; the JPO is more forgiving.
- A rejected IPO request bars a further attempt — get it right first time.
- 44 of the first 100 requests failed on eligibility.
Frequently asked questions
What documents are needed for a PPH request in India? Copies of the OEE’s office actions relevant to substantive examination with translations, copies of claims found patentable, copies of cited references, and a claim correspondence table.
How long is allowed to correct defects in a PPH request? Thirty days at the Indian Patent Office. If defects persist after correction, the applicant is barred from making a further request.
Is there a limit on PPH requests? The pilot capped requests at 100 per office per year and ten per applicant, subject to review — verify the current limits before filing.
Are translations accepted in English? Yes, by both offices, with the Indian Patent Office requiring self-certification of translations.