India is a major hub for industrial activities and economic investments. Increased investments from foreign countries will surely boost India's economy and facilitate a dynamic and fast-growing economic environment. In today's world, Intellectual Property has emerged to be the most significant and valuable resource there is and India has recognized the same. Realizing the fact that promotion of IP will ensure India's position in the global market as a key player, we have entered into international treaties and conventions. From an industrial point of view, patents are the most important IP. Hence simplifying the process of grant of patents will surely be an attractive incentive for better inventions and innovations. On 20th November 2019, the cabinet approved the proposal for the for adoption of Patent Prosecution Highway (PPH) programme by the Indian Patent Office (IPO) under the Controller General of Patents, Designs & Trade Marks, India (CGPDTM) with patent offices of various other interest countries or regions which commenced on 5th December 2019.1 As of now, it's on a pilot stage and has only been signed between India and Japan patent offices for a period of three years. There are certain benefits and drawbacks to it which has been analysed in this article.
This pilot Bilateral Patent Prosecution Highway could prove to be a landmark step in the development of patent prosecution in India. This step would expediate the granting of patents in India which would encourage more Japanese companies to invest in India and enable them to reap the benefits of the pilot programme. It will promote the influx of newer technologies into India which in turn shall increase employment opportunities available to people. Moreover, PPH helps in paving the way for Indian start-ups and Small and Medium Enterprises to easily get their inventions patented in Japan.2
This program facilitates the Indian Patent Office to receive patent applications for expedient examination in few technical fields only. They are electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy. But at the same time JPO can receive applications in all fields of technology.3
One of the main objectives of this treaty is to promote work-sharing between the patent offices of these two nations so that patent applicants can request for accelerated processing in the national phase, where patent examiners can make use of the work products from the other Office. The IPO has laid down guidelines to be followed by applicants who want to make use of the PPH programme.4 It lays down the procedure to be while making an application to the Office of Later Examination (OLE). Under this PPH pilot programme, the office which determines the patentability of the subject matter is called the Office of Early Examination (OEE) and the office which receives the PPH application is the OLE. There is a limit on the number of PPH applications which can be accepted in a year by both IPO and JPO; which is limited to 100 applications per year currently. Moreover, a single applicant can only submit a maximum of 10 PPH applications per year.
Benefits of PPH
There are certain objectives with which the Government of India has entered to the PPH programme with Japan. One of the main reasons is the reduction in time for disposal of patent applications. It provides the much-needed relief to patent applicants from the tussles of a complicated system. In addition to easy disposal, it would also reduce the pendency period of the patent applications thus facilitating a robust and efficient mechanism. Another positive effect of PPH is that it shall inevitably improve the quality of search and examination of patent applications. It will pave way for an increased rate in the domestic patent filing by enabling applicants to leverage allowance of claims from one office to another. The primary objective is the expeditious examination of applications which shall result in high allowance rates and significant cost savings for the applicant. It would undoubtedly help them to take better advantage of their inventions and innovations in India. Moreover, the India-Japan PPH will encourage similar endeavours in the future with other countries as well. It would make India a hotspot for investment by foreign applicants. The simplified mechanism shall be very beneficial for the MSMEs and Start-ups of India who will be able to get their applications expeditiously examined in Japan. Thus, a mechanism of smooth business development is envisaged by this programme. In addition, PPH will ensure that there is a consistency in the quality of the granted patents in both the countries.5
Drawbacks of PPH
Even though there are many benefits to the PPH pilot programme, there needs to be a thorough examination of its effect on India. Unlike Japan which is a developed country, India is still a developing country and hence the conditions prevailing in both the countries with regard to their approach to Intellectual Property are quite different. In order to safeguard the interests of India, it is necessary that patents are examined and granted with regard to the local conditions prevailing in India and not pressurised to give into the demands of the developed nations. There have been many criticisms in the implementation of PPH fearing that it would dilute the Indian Patent Regime.6
The Patent Act, 1970 is a well thought out unique legislation. It has laid down strict standards for patentability criteria in India. It is supplemented by the Patent Rules, 2003 which was recently amended to facilitate the implementation of PPH. Even though the PPH programme is limited to the examination of patent applications, it is very likely to have impact on the grant of patents as well. It is because attempts to speed up the examination process would most likely force the IPO to rely upon the search reports of other patent offices with lower patentability standards thereby undermining the patentability standards of the Indian law.
Compared to India, Japan has a more relaxed patent regime and there is a high probability that the patent examiners shall grant patents ignoring the strictpatentability norms laid out in the Act by relying on the examination report of the JPO.7It is a major concern that PPH could lead to 'harmonization' of India's patent laws with that of Japan. The fact is it might not be limited to Japan as there is scope of entering into PPH with other nations as well. This step is contrary to India's attitude towards harmonization till now. There is an apprehension among many including various NGOs who have raised their concerns regarding the PPH programme. It is argued that PPH goes beyond India's obligations under TRIPS as well as compromises India's ability to make full use of the TRIPS flexibilities to address its different socio-economic needs. Also, India's decision to implement PPH could have certain adverse effect on other developing countries. They might be pressured to emulate similar types of agreements which might not be the best scenario according to their local prevailing conditions and circumstances.8
Additionally, the fast track system for disposal of patent applications are likely to reduce the extra level of scrutiny available in the form of pre-grant opposition as opponents may find it difficult to file objections within a short period of time.
To conclude, the pilot Patent Prosecution Highway between the IPO and JPO can indeed be considered as major step in the arena of Indian Intellectual Property Law. It puts India on the forefront and in the league major developed countries like Japan. It could prove to be great initiative in making India an innovative based economy. It might also incentivise tech companies to set up R&D and manufacturing facilities because of speedy disposal of cases. However, one needs to be aware of its disadvantages as well which has been discussed above.9Till now, India has been vocal in its opposition against WIPOs take on harmonization of patent regime across nations. Hence, it is interesting on India's part to enter into such an agreement. Moreover, the PPH with Japan would pave way for other developed and powerful sources like USA to demand similar agreements with their patent offices. It is thus very important for a developing country like India with huge potential to achieve a proper balance between development and catering to its socio-economic needs.
2 India, Japan Resolve to Expedite Bilateral Patents Procedure, http://www.xinhuanet.com/english/2019-11/21/c_138573169.htm
4 PROCEDURE GUIDELINES FOR PATENT PROSECUTION HIGHWAY (PPH), http://www.ipindia.nic.in/writereaddata/Portal/PPH_Procedure_Guideline
7 Latha Jishnu, Patent Prosecution Highway: The fast track to disaster, (https://www.downtoearth.org.in/blog/economy/patent-prosecution-highway-the-fast-track-to-disaster-63088)
8 Leena Menghaney and Roshan John, India's patentability criteria: Do it our way, not the highway (https://www.thehindubusinessline.com/specials/pulse/indias-patentability-criteria-do-it-our-way-not-the-highway/article29664760.ece#)
9 India-Patent Prosecution Highway (PPH) Alliances are now a reality, https://www.lexology.com/library/detail.aspx?g=cf30fbd6-12e5-4fd3-9d85-695376b089d1
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.