India: Expedited Patent Examination In India

Introduction

The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

• The patent applicant is a start-up
• The patent applicant was a start-up at the time of filing the patent application
• The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant is a start-up

The patent applicant has to be a start-up as defined by the patent rules to opt for expedited examination.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

• The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.
• The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66). 

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination. 

Fees for expedited examination

The fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

Converting ordinary examination request to expedited examination request

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below. 

Expedited examination procedure

The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.

Note that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.