India: Patent Prosecution Highway (PPH)

 Patent offices across the world are seeing increasing number of patent applications. Globalization in sectors like commerce, technology, education etc. has led to an increase in patent applications. It has been observed that same patents are filed in multiple countries, increasing the redundancy of applications. This has led to all the patent offices and officers working together in cooperation. It is believed by many patent examiners and commissioners that this type of co-operation is very crucial to increase productivity. In addition to this, large number of pending applications and backlogs has made this cooperation a must and giving rise to what is known as Patent Prosecution Highway.

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices. Under PPH, participating patent offices have agreed that 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 fast-track 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.10

Supporters of this program often cite following advantages:

PPH, through the exploitation of all the search/examination-related information of the OEE,

(1) Delivers lower prosecution costs,

(2) Supports applicants in their efforts to obtain stable patent rights efficiently around the world; and

(3) Reduces the search/examination burden and improves the quality of the examination of the major patent offices in the world.

The Patent Prosecution Highway was first developed between the USPTO and the Japan Patent Office ("JPO") as a pilot program that began on July 03, 2006.11

This Pilot program was started to explore a way to reduce burden on both the US and Japan patent offices for the same patent filed in both the countries. The sole purpose of this pilot project was to expedite the patent examination in the second office by considering the examinations results of the first office of applications if the patent application was found to be patentable in the office of first examination.

PPH Program - India and Japan

India and Japan have always been celebrating a very close collaboration in almost every aspect. The two bid Asian countries have partnered in a number of projects and now another partnership have been marked in the field of intellectual property rights. Since 2015 the two countries have been initializing various cooperative steps in the field of IPR. In 2015 the two countries entered in the Memorandum of Cooperation (MoC) in order to further the investment and business expansion by Japan's industrial sector in India. Further in May 2017, the Office of Controller General of Patents, Design and Trade Marks (CGPDTM) of India and patent office of Japan signed an enhanced new action Plan. It was agreed that both the national bodies would start new initiatives with respect to IPR. Action plan included follow up training courses for new patent examiners of CGPDTM or sending JPO officials who are well- versed with patent prosecution highway to India.

In one of the latest event on October 30th of this year the head of state of both the countries advanced their collaboration for developing and enlarging the scope of intellectual property rights by realizing the true potential of India-Japan economic relationship. The two partner countries emphasized on Patent prosecution which led to Japan's strong sustenance for key transformational enterprises such as "Make in India", "Skill India" and "Clean India Mission", through sharing of resources and advanced technologies, and active mobilization of Japanese public and private sector investments. The number of patent filings by Japanese Companies in India has nearly tripled over the last decade. Ascertaining such collaboration of the two countries in the area of IPR, Japan and India established to start a bilateral Patent Prosecution Highway Program on experimental basis in specifically recognized fields of inventions during the first quarter of Financial Year 2019. Through this, they welcomed the expansion of Japan's Foreign Direct Investment in India under the "India- Japan Investment Promotion Partnership", the progress made in Japan Industrial Townships (JIT) and other initiatives included in the Japan-India Roadmap for Investment Promotion.

At the Japan-India Summit Meeting on October 29, 2018, the leaders of the two countries concurred to start a bilateral PPH program on a pilot basis in certain identified fields of inventions in the first quarter of fiscal year 2019. Under the program, Japanese companies can request expedited examinations in India through simplified procedures, based on their applications whose claims have been determined to be patentable in Japan. The number of IP offices that Japan has set up in the PPH program will reach 43.Going forward; the Japan Patent Office (JPO) continues supporting Japanese companies to promptly acquire patents overseas, by expanding the PPH network, as well as standardizing and simplifying the procedures at IP offices worldwide.12

Conclusion

Overall, PPH offers a lot of benefits to patent applicants. PPH model which allows applicants to influence allowance of claims from one office to another might lead to an increase in domestic patent filings. It will play a crucial role in increasing patent filling in India. A quicker patent prosecution will attract many applicants for Indian jurisdiction, which will unquestionably contribute towards the patent prosecution development.

Footnotes

10 Source http://www.uspto.gov/patents/init_events/pph

11 http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf

12 http://www.meti.go.jp/english/press/2018/1030_001.html

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