India-Patent Prosecution Highway (PPH) Alliances are now a reality

Indian Patent Office (IPO) is trying to walk the path that t USPTO paved in 2006 by extending its first PPH program to the Japanese patent office (JPO) on a pilot basis. To implement PPH, the Indian patent office has brought amendment in the Patent Rules 2003 notified in September 2019. The objective is to expedite the disposal of patent applications introducing a new category of applicants who could avail the benefits of expedited examination. The new rules allowed the IPO to enter into agreements with the other patent offices to “officially” (since patent offices even in absence of any agreement have been referring to the examination and search reports issued by each other for affirming or rejecting the patentability of the invention) let the examiners of one patent office to reuse search and examination results already conducted by another patent office.

Why Japan

The filings by Japanese corporations in India has tripled over the past 4 years, as suggested  by the Annual Reports published by the office of Controller General of Patents, Designs & Trade Marks (CGPDTM) of India over the past few years. Among the Asian countries, Japan has consistently filed the most number of India bound patent applications between 2016-2018 (8762 applications). Therefore, it was natural to have first alliance of the pilot patent prosecution highway program with Japanese Patent Office (JPO). As an antecedent, the prime ministers of both countries met in 2018, followed by Japan signing a Memorandum of Co-operation (MoC) with the Department for Promotion of Industry and Internal trade (DPIIT) formerly DIPP in order to promote quicker acquisition of IP rights in India. As a direct consequence of this pilot program and the recent amendment in Patent (Amendment) Rules 2019 ( notified on 17th September 2019) Japanese companies would now be able to request for expedited examinations in India for applications already filed at the Indian patent office and where such claims have been determined to be patentable in Japan. The decision whether to grant a patent would remain under the control of the regional Offices of India and Japan. However, the applicants can acquire patents through a quicker and much simplified procedure.

Will government expand PPH

The statistics from the Annual Report (2017-18) also gives us insights on the future expansion of the PPH alliances by the IPO. For instance, statistics from the latest annual report suggests that out of the 47,854 patent applications filed in the year 2017-2018, 26,584 applications were filed in India through the PCT route which comes to approximately 48%. The information is suggestive that India is well positioned to have a PCT centric bilateral and global work-sharing agreements which would enable patent applicants to request accelerated processing in the national phase, where patent examiners can make use of the work products (the Written Opinion of the International Searching Authority, the Written Opinion of the International Preliminary Examining Authority, or the International Preliminary Examination Report issued within the framework of the PCT, subject to certain conditions) from the other Office(s). A number of such bilateral (PCT-PPH) and global PPH agreements have been signed by other patent offices worldwide. By requesting that their applications be processed under these agreements, applicants can generally obtain patent registration more quickly before participating Offices.

The 2017-18 Annual Report further suggests that the Republic of Korea, China, USA, Germany, France, Switzerland, Netherlands, Sweeden, U.K. file a substantial number of patent applications in India through PCT and convention routes being the top two modes to enter into the Indian National Phase.

Our Comment

The proponent of PPH armed with statistics favour more such PPH alliances (whether bilateral, multilateral, global) with other patent offices as it would make the Indian economy innovation based. Further, a speedier disposal of the cases through more such PPH programs in their view would further incentivize the “deep-tech” companies to invest more in AI, ML, big data, IOT etc. for  setting up R&D and manufacturing facilities. On the other hand, the local pharmaceutical lobbies and those working in farm and agritech areas feel PPH will not just result in expedited examination but examiners simply relying on the examination report of the JPO and grant patents ignoring the strict patentability norms laid out under the Indian law. Thus, diluting India’s stand against “evergreening” of patents. If we look at recent trends highlighted in the Patent office Annual Report, it shows an increase of 32.5% in the grant of patents and 108.2% in the examination of patent application over the previous year. The figures reflect appreciable effort made by the Patent office in clearing backlog, therefore, need for India to take PPH route is not clear when India has stood against WIPO’s earlier attempts to harmonise Patent laws.

In essence, it would be interesting to see how PPH program will turn out for advancing trade interest of India as well as maintaining access to medicines and agri technologies.

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