Evolution in Indian Prosecution: Moving towards Patent-Prosecution Highway (PPH)

In the past few years, there have been many major changes in the Indian Patent Law. One such change, which is aimed at revolutionizing the patent procedure in India is the introduction of Patent-Prosecution Highway (PPH) between India and Japan.

The bilateral PPH program, initiated on a pilot basis in certain identified fields of invention, has its origin in the Memorandum of Cooperation (MoC) on Industrial Property signed between the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry of the Republic of India and Japan Patent Office (JPO), Ministry of Economy Trade and Industry of Japan. The two ministries have been working together in order to establish a framework for bilateral cooperation in the field of Intellectual Property (IP), recognizing its pivotal role in achieving socio-economic developmental goals, stimulating innovation and promoting creativity.

The history of PPH lies in a trial program between the U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) in July 2006, which eventually led to the establishment of a fully implemented PPH program between the two nations in January 2009. It is pertinent to mention that although India has not participated in any similar prosecution highway programs in the past, Section 8 of the Indian Patents Act imposes an obligation on every applicant of an Indian application to update the Patent Office regarding the prosecution status of corresponding foreign applications by furnishing a statement of details for any application being prosecuted in a foreign country in respect of the same or substantially the same invention.

Patent-Prosecution Highway (PPH) is a bidirectional cooperative program between two or more patent offices to expedite the allowance of patent applications. It allows one Patent Office to refer to the search and examination results conducted by the other Patent Office while examining the application.

One of the most crucial steps in the process of grant of a patent lies in its examination, which is a laborious process. As the term of a granted patent in India is twenty years from the date of filing the patent application (the date of filing the PCT application; in case of a PCT application), the delay in grant of a patent reduces the term of patented invention for which the patentee can enjoy monopoly rights over it, thus placing him at a lesser advantageous position.

The PPH program is therefore beneficial as it eliminates wastage of time and effort in re-examination of the same application by the other participating Patent Offices, consequently avoiding redundancy. It accelerates the examination process for corresponding applications filed in participating patent offices by allowing fast-track examination procedure among these offices so as to allow applicants to reach final disposition of an application more swiftly and efficiently than standard examination processing. Further, applications through PPH have a higher allowance rate. However, it is to be understood that the principal objective of PPH is to accelerate examination of an application, not its allowance, even though a greater percentage of PPH applications frequently proceed to allowance with fewer office actions as compared to non-PPH applications. It is also to be noted that PPH participation eventually offers applicants the advantage of reduced prosecution costs owing to the substantial reduction in the number of office actions.

The PPH program between India and Japan is aimed to be operational from the first quarter of FY2019, subject to completion of necessary formalities, including the necessary amendments in the Indian Patents Act. It is noteworthy that the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry has taken a step forward in this context by notifying draft rules [Patents (Amendment) Rules, 2018] on December 4, 2018 for the stakeholders’ comments wherein it has proposed to expand the group of applicants eligible to file a request for expedited examination of applications to include PPH participants as well. The said draft provision lays down one of the grounds to file for expedited examination as “that the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office” .

Altogether, this program is a great initiative and can be seen as a landmark advancement in the history of patent prosecution in India. The program is expected to result in significant benefits such as expeditious patent grants, high allowance rates and the potential for significant cost savings, which would enable applicants to successfully and efficiently take advantage of their inventions in India. This would encourage foreign applicants to enter the Indian market. This indeed is a great stride towards achieving a vibrant IP regime in the country.