India: Expedite Examination Scheme By IPO- An Introduction

Last Updated: 5 September 2016
Article by Aayush Sharma

Introduction :

In the recent amendments made by the Indian patent office 'The Patent Amendment rules, 2016' introduces the expedite examination scheme for the Patent applicants in India. Earlier, there was no such provision of expedite or express examination for the Applicants except in case of PCT national phase entry where the Applicant who wishes to file the PCT national phase application can opt along with PCT Application for requesting examination well before 31 months timeline. In the normal examination procedure, the Applicant has to file request for examination within 48 months time period from date of Priority or Date of filing in India (whichever is earlier). Upon receipt of RFE application and after publication of Application in the official journal, the IPO considers the application for examination and the Ld. Controller assigns the application for examination to the Ld. Examiners. The Ld. Examiner upon receipt of application from Controller, examine the application and will issue first examination report [FER] to the Applicant and then the Applicant needs to respond to the same within six months (Patent Amendment Rules, 2016) from the date of receipt of the FER. This whole process of examination takes 2-4 years for putting the application to grant. This is a very serious issue on part of Applicant that from the valuable time of 20 yrs for holding the Patent rights, 5-6 yrs has been lapsed because of such lengthy examination course of action. Thinking from the Applicants side, this a huge loss for the Applicant for claiming the Patents right up to 20 yrs. Considering the above situations many patent offices have introduced Patent prosecution highway [PPH] or expedite examination programme where the examination of Patent application shall be done within a short span of time and the Patent application has been put for grant in timely manner.

USA:

In US patent and trademark office, under PPH, when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fasttrack examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

JAPAN:

In the JPO and under the following circumstances, the Applicant is allowed to expedite prosecution:

  1. If the application has been filed in a foreign country (any countries outside Japan).
  2. If an applicant or licensee of the application is using or selling the invention in Japan.

To expedite examination, first, a request for examination must be filed. Then, it is necessary to file a petition for expedited examination with the JPO after the examination request is filed.

EPO:

When accelerated examination is requested, the EPO makes every effort to issue the first examination communication within three months of receipt by the Examining Division of the application, the applicant's response under Rule 70a or the request for accelerated examination within 6 months of receiving FER. Whereas, for Euro-PCT applications too, accelerated examination may, in principle, be requested at any time. However, to be as effective as possible, it should preferably be requested: on entry into the European phase before the EPO, or together with any response to the WO-ISA, IPER or SISR required under Rule 161(1). If requested on entry into the European phase, accelerated prosecution covers formalities examination, the supplementary European search report and/or substantive examination, as applicable. Now coming back to Indian Patent law, in the recent Patent Amendment rules, 2016, the IPO has launched expedite examination scheme which helps the Applicant with reduction in time as well timely disposition of the Application. The IPO has introduced said express examination procedure under only two conditions:

Indication of India as International Searching Authority (ISA) or election of India as International Preliminary Examining Authority (IPEA) in the corresponding international patent application.

Eligibility of applicant as start up

Only when an Applicant satisfies the either of the above said conditions, then only expedite examination request can be entertained by the IPO. These steps are introduced to invite more and more companies to file Patent Application in India and to make India as a popular patent filing hub. Now many applications for initial examination are filed in US, EP, Japan, and China. To minimise such practise for foreign applicants, India has introduced express examination scheme. Secondly, the scheme is introduced for new class of inventors 'Start up' companies who are recognised as a start up by the Government of India. The India Patent law has provided express examination provision for Star up so that within short span of time Patent rights are been given to new and useful inventions and more preferably bright inventors are able to come in the Indian Patent arena.

The official fee for filing expedited examination is also more as compared to normal examination fee. This request is to be made in form 18A and fees applicable for natural person(s) and/or Start up is INR 8,000, for small entity is INR 25,000, and for others is INR 60,000. The IPO has also introduced new provision for those applicants who has previously filed normal examination request and now wants to prosecute fast examination procedure. Fees applicable for Converting an earlier filed request for examination (non-expedited) into expedited examination are INR 4,000 for natural person(s) and /or Start up, INR 15,000 for small entity and INR 40,000 for others. This conversion can also be done through form 18A. It is worth to note that form 18A can only be filed through electronic mode and not by physical mode.

The provision of introducing the expedite examination in the Patents amendment rules, 2016 is a good step by the IPO. Such step was heartedly welcome by the IPR industry not only in India but also around the world. Since, from the launch of the express examination provisions, large number of request has been filed till date by the start-up as well as by the foreign entities. On seeing such huge response, the IPO has put limit on the number of expedite examination to 1000 request per year. More and more such steps should be introduced in the Patent law so that inventors may feel best protection sought for Patents in India. Also, we expect introduction of expedite examination procedure for other applicants and application types such as PCT national phase filing, ordinary application etc. This should not be limited to start up or for Applicants who indentify India as a first ISA or IPEA.

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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