THE INDIAN PATENT OFFICE RELEASES GUIDELINES FOR THE IMPLEMENTATION OF PPH BETWEEN INDIA AND JAPAN
The Indian Patent office on November 29, 2019 released Guidelines for implementation of the bilateral Patent Prosecution Highway (PPH) pilot project between India and Japan. The PPH pilot program between IPO and JPO has officially commenced from November 21, 2019 for a period of three (3) years.
As per the Guidelines, the Indian Patent office shall start accepting the PPH applications from December 5, 2019.
While the number of the requests for the PPH in each Office will be respectively limited to 100 cases per year; the IPO has also for now limited the number of requests for the PPH made by same applicant per year from time to time. 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 major requirements for filing a PPH request are:
(a) Both the Office of Later Examination (OLE) application on which PPH is requested and the Office of Earlier examination (OEE) application(s) forming the basis of the PPH request shall have the same earliest date (whether this is a priority date or a filing date)
(b) Patent applications to be initiated in the Office of the IPO or the JPO
(c) At least one corresponding application exists in the OEE and has one or more claims that are determined to be patentable/allowable by the OEE
(d) All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable/patentable in the OEE
(e) Substantive examination of the OLE application for which participation in the PPH is requested has not begun
f) Under this PPH Pilot Program, the IPO will receive Patent applications only in the technical fields of Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy.
g) The request for expedited examination in Form 18A shall be submitted by electronic transmission
The guidelines further notify formal requirements for the purpose which can be accessed here.
In those instances where the request does not meet all the requirements set forth above, the applicant will be notified about the defects. The applicant has to correct the defects by submitting necessary documents within 30 days which will be the only opportunity for the Applicant to correct the defect. In case there is a failure to correct the defect, IPO will issue the notification of not assigning a special status for expedited examination under the PPH and the applicant will not be in a position to request the PPH again.