India: Implementing Patent Prosecution Highway (PPH) In India

INTRODUCTION:

The Patent Prosecution Highway (PPH) is an effective way for accelerating Patent prosecution procedures by the sharing of Patent Search and Examination results between some Patent Offices. Under the PPH program, Patent Offices worldwide can benefit from the work previously executed at other Patent Office, with an aim of improving Search and Examination quality and reducing the examination workload.

It is a way of simplifying Patent Prosecution and reducing the timeline for providing Patent rights and eliminating any waste of effort and time. It is an agreement between two Patent Offices which allows one Patent Office to reuse search and examination results conducted by other Patent Office, thereby benefiting from this agreement by eliminating wastage of any additional time and effort and utilizing the time for proper complete search and examination of Patent applications.

PPH IN USPTO

1In USPTO under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently.

USPTO has extended its PPH program to many countries and has agreement with several Patent Offices for Patent Prosecution Highway. The several Patent Offices under ties include:

  • Canadian Intellectual Property Office (CIPO)
  • Mexican Institute of Industrial Property (IMPI)
  • European Patent Office (EPO)
  • German Patent and Trademark Office (GPTO)
  • Israel Patent Office (ILPO)
  • Japan Patent Office (JPO)
  • Korean Intellectual Property Office (KIPO)
  • Taiwan Intellectual Property Office (TIPO)
  • UK Intellectual Property Office (UK-IPO)
  • United States Patent and Trademark Office (USPTO)
  • IP Australia (IPAU)
  • Hungarian Intellectual Property Office (HIPO)
  • Danish Patent and Trademark Office (DKPTO)
  • National Board of Patents and Registration of Finland (PRH)

As per the PPH program if one of the claims is accepted to be patentable by the office of first filing (OFF), the applicant may request the office of second filing (OSF) for the expedited examination of the corresponding Patent application claims.

Under PPH program the US application must come from the route of either Paris convention or Patent Cooperation Treaty, after the filing of Priority application. Such application must have at least one claim which was declared patentable at the office of first filing. The claims of the U.S. application as originally filed or as amended, must sufficiently correspond to one or more of the allowed claims in the office of first filing.

Although the fact that the claim was allowed in the office of first filing would not mean automatic acceptance of the claims at the office of second filing, the examiners will conduct proper examination of the Patent application as per the law of the office of second filing.

TRILATERAL PCT-PATENT PROSECUTION HIGHWAY (PCT-PPH)

2A Patent Cooperation Treaty/Patent Prosecution Highway (PCT/PPH) pilot program was also started on 29 January 2010 for a planned period of two years. This pilot program enables to "[fast-track] patent examination procedures for PCT applications that have received a positive written opinion of either the International Searching Authority or the International Preliminary Examining Authority, or an international preliminary examination report from the European Patent Office (EPO), the Japan Patent Office (JPO) or the United States Patent and Trademark Office (USPTO)."

In PCT-PPH program if an applicant is receiving a positive written opinion/International Preliminary report on patentability from one of the participating offices acting as International search authority, he may apply for expedited examination of the corresponding National Phase applications worldwide.

This is a very efficient way of Patent prosecution as it provides complete information and the search and examination part is conducted well and efficiently and further it saves time in providing rights to the Patentee by eliminating unnecessary time taken in Patent prosecution.

In Patent prosecution a very important aspect of examination is to conduct complete Prior Art Search and limit the claims that are broad in scope and complete analysis of the Prior Art Search to efficiently understand & satisfy the Patentability factors i.e. Novelty, Inventive Step and Industrial applicability, which are essential for Patent grant.

In the PPH program, the office of second filing (OSF) can use and rely on the search and examination results of the office of first filing (OFF), which will save time and expedite the proceedings at the office of second filing. In this way the OSF can exclude the risk of disregarding a foreign language prior art and producing great quality Prior Art Search and Examination results.

In India there is a quite similar provision under Section 8 of the Patents Act, 1970, whereby every applicant is required to submit information about all the corresponding foreign Patent applications, wherein details like Publication, Grant or rejection of corresponding Patent applications is to be reported to Indian Patent Office from time to time.

SECTION 8 FROM PATENTS ACT, 1970:

3information and Undertaking Regarding Foreign Applications

  1. Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application [or subsequently [within the prescribed period as the Controller may allow]]—

    1. a statement setting out detailed particulars or such application; and
    2. an undertaking that, [up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of [detailed particulars as required under] clause (a) in respect of every other application -. relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

  2. At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

By this Indian Patent Offices is aware of the prosecution in other Patent offices with regards to a particular invention.

ADVANTAGES OF IMPLEMENTING PPH:

The advantages of PPH can be an effective and faster examination of Patent applications, a decreased prosecution costs as few Office actions are eliminated and further a higher acceptance rate for Patent applications as regards the acceptance of claims after the Prior Art Search and other Patent Offices. Although it is the discretion country wise to allow or reject a Patent application but the search and examination conducted in other Patent Offices certainly improves the quality of examination proceedings, specially when there are involved prior art in different languages.

On the other hand there are some differences in the prosecution of Patent Offices worldwide which will reflect in the search and examination conducted in the other Patent Offices, the quality and standards might differ, but still any additional information will be useful for proper search and examination.

Further the non-patentable inventions might not benefit from the PPH program as the quality of search and examination will rise. Also applicants who actually want to delay the prosecution in order to establish well for the commercial exploitation of the invention, might not find the PPH program useful.

CONCLUSION

Implementing Patent Prosecution Highway in India will surely increase the number of Patent filings in India, as it will increase the efficiency and prosecution timeline for Patent applications. Further the Prior Art Search and examination conducted in other Patent Offices under agreement will improve the quality of search and examination, which will increase the allowance of claims accepted in the other Patent Offices. A faster Patent Prosecution will attract many applicants for Indian jurisdiction, which will definitely contribute towards the technological development.

Footnotes

1 http://www.uspto.gov/patents/init_events/pph/index.jsp

2 http://en.wikipedia.org/wiki/Patent_Prosecution_Highway

3 Section 8, Patents Act 1970

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.

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