Patent Prosecution Highway (PPH) is a bilateral arrangement signed between patent offices to promote work-sharing and enable patent applicants to request accelerated processing in the national phase, where patent examiners can make use of the work products from the other Office(s).1
PPH includes referring and considering the cited prior art references of the search and results and/or conclusions of the substantive examination of one patent office while examining the application by the other patent office.
The honorable Prime Minister of India, Sri. Narendra Modi, during his visit of Japan in October 2018 for the India-Japan Annual Summit, with the Prime Minister of Japan Shinzo Abe, recognized close cooperation in Intellectual Property Rights between the Intellectual Property Offices of the two countries. The two leaders concurred to start a bilateral PPH programme on a pilot basis in certain identified fields of inventions in the first quarter of FY 2019.2
Indo-Japan PPH - Background
In recent years, Japan has shown strong support for key transformational initiatives 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 JPO has been cooperating for swift acquisition of IP rights in India through a memorandum of
cooperation (MOC) between the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry (MCI) in June 20153 . In May 2017, the JPO agreed on a revised Action Plan enlarging cooperation with the Office of the Controller General of Patents, Designs, & Trade Marks and in September 2018, after the Second JPO- DIPP Review Meeting in August 2018, JPO and DIPP agreed in principle, to start a bilateral PPH program on a pilot basis in certain identified fields of inventions in the first quarter of fiscal year 20194 .
After the Second Review Meeting on IP, the JPO and the DIPP agreed in principle to start a bilateral PPH program on a pilot basis in the first quarter of fiscal year 2019. Additionally, the JPO and the DIPP both agreed on implementation of a variety of initiatives including the below listed areas:
- Information exchange related to IT infrastructure.
- Cooperation in the field of IP awareness.
Approval on the Indo-Japan PPH5
A release from Press Information Bureau Government of India Cabinet on November 20, 2019, confirms that the Prime Minister Shri Narendra Modi has approved the proposal for adoption of 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.
This PPH programme will initially commence between Japan Patent Office (JPO) and Indian Patent Office on pilot basis for a period of three years only. Under this pilot programme, Indian Patent Office may receive patent applications of certain specified technical fields only, namely, Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy while JPO may receive applications in all fields of technology.
The ambit of the programme may be extended in future, as decided by the Commerce & Industry Minister. The patent offices will frame their own guidelines for implementation of the programme.
This Indo-Japan partnership may lead to the below listed advantages for the IPO:
- Reduced time for disposal of Patent Application(s).
- Increased effective active life of the Patent(s).
- Improved quality of examination procedure of Patent Application(s).
- Accelerated examination in Japan for patent applications claiming priority from India.
In a nutshell, the Indo-Japan PPH programme can be seen as a landmark initiative in the Indian patent prosecution system. This programme is expected to be advantageous in terms of expedite patent allowance and cost effectiveness. This programme will encourage the Japanese applicants to enforce their applications in Indian Jurisdiction.
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