Procedure Guidelines for Bi-Lateral patent prosecution Highway (PPH) between India and Japan

By: Joginder Singh & Piyush Sharma

Since the signing of the pilot PPH program agreement between Japan and India in late 2018, Applicants having commercial interests in both the countries have been eagerly waiting for the program to commence. The stakeholders became more hopeful of the commencement when the Indian Patent Office (IPO) released the amendment in the Patent rules in September 2019, listing Applicants availing PPH as an eligible category for the facility of expedited examination. Thereafter, on November 20th, 2019, the Union Cabinet also approved the proposal for the adoption of PPH program. Subsequently, putting an end to the wait of the stakeholders, on November 29th, 2019, the IPO and the Japan Patent Office (JPO) released the much-awaited procedure guidelines for PPH. The guidelines are applicable to normal PPH as well as PPH-Mottainai. These guidelines clearly outline details for implementing the PPH program in both countries. The details relate to conditions of implementation, criteria for eligibility of applications to avail this facility, supporting documents to be submitted along with the request of expedited examination through PPH, and procedure for handling of such requests by both the offices.

The PPH pilot program has commenced on November 21st, 2019 for a period of three years, and the IPO and the JPO will start accepting PPH requests from December 5th, 2019. There is a limitation on the number of PPH requests that will be accepted by each office, i.e., 100 requests per year for now. Considering that only 100 applications can avail this facility in each office, it would not be wrong to expect that this limit would be reached quickly.

Quite understandably, apart from these guidelines, each office has the discretion to establish its own guidelines for the execution of the PPH program. For example, the IPO would not allow any Applicant to file more than 10 PPH requests per year. This limit will be reconsidered after March 31st, 2020. On the other hand, the JPO has not put any such limitation on the number of PPH requests that can be filed by a single Applicant.

Further, the guidelines enlist criteria for eligibility of an application to avail the facility of PPH. Some of the criteria are common to both the offices. For example, both the Office of Later Examination (OLE) application and the Office of Earlier Examination (OEE) application shall have the same earliest date. Therefore, the OLE application may be an application claiming priority under Paris convention from the OEE application(s) or an application providing priority under Paris convention to the OEE application or an application sharing a common priority document with the OEE application(s) or a PCT national phase application where both the IPO application and the PCT application are derived from the common PCT international application. The PPH facility can also be availed by applications belonging to a patent family of which at least the earliest application was filed either with the IPO or the JPO. In case of a PCT application, the facility can be availed by an application only if the PCT application is filed with the IPO or the JPO as a Receiving Office (RO). For the ease of understanding, the guidelines provide simple examples of eligibility as well as ineligibility of applications in the Annexure 1 of the guidelines document.

Another criterion is that at least one corresponding application shall exist in the OEE and one or more claims of the corresponding application are determined to be patentable by the OEE. The corresponding application can be an application providing priority to the OLE or an application deriving domestic priority from the OEE application or an OEE national phase application of a PCT application. Interestingly, for the purposes of this condition, the claims are considered as “determined to be patentable” when the OEE examiner clearly identifies the claims to be patentable in an office action, even if the application is not granted yet. Therefore, the Applicant does not have to wait for the OEE application to be granted. A clear indication of the claims being patentable by the OEE examiner would suffice for filing the PPH request for the OLE application.

As far as the scope of claims of the OLE application is concerned, the claims must sufficiently correspond to the “determined to be patentable” claims of the OEE application. Particularly, the OLE claims should have a scope that is either the same/similar or narrower than the OEE claims. In an interesting example, the guidelines mention that if the OEE claims are directed to a process category and the OLE claims include product claims depending on the process claims, then the dependent product claims would not be considered as corresponding to the OEE claims. However, this condition of claim correspondence is applicable only at the time of filing the PPH request. Once the request is granted, the Applicant has the liberty to amend the claims as per the local Patent Laws, even if the amendments do not sufficiently correspond to the OEE claims. Therefore, the Applicant can propose any desired amendment in the OLE claims once the request is granted.

Further, the Applicant cannot file the PPH request for an application, once the Examiner accepts its designation in the JPO or the application is allotted to an Examiner for examination in the IPO. Particularly for the IPO, considering that there is no certain way of knowing whether an application is allotted to the examiner for examination, it would be recommended to file the request along with the filing of the application, in case the claims in the JPO are determined to be patentable by then. If the claims are not yet determined to be patentable at the JPO at the time of filing the application in the IPO, the Applicant should file the request as soon as the claims are determined to be patentable at the JPO.

Coming to the office-specific requirements, the IPO has specified that the applications belonging to certain technical fields can avail this facility. Such technical fields include Electrical, Electronics, Computer Science, Information technology, Physics, Civil, Mechanical, Textiles, Automobiles, and Metallurgy. Therefore, notably, inventions relating to the field of biomedical and chemistry are not eligible for availing this facility. The guidelines include an exhaustive list of International Patent Classifications (IPCs), which are considered eligible for the PPH request. On the other hand, the JPO has allowed the Applicants to file the request for the applications belonging to any technical field.

With regard to fees, at the IPO, the fee for filing the request for expedited examination at IPO would be about USD 850 to USD 1050 for a large entity, depending on whether the Indian application is published at the time of filing the PPH request. Further, the IPO offers significant discounts for applicants falling under different categories, such as individuals, small entities, and start-ups. In contrast, at the JPO, there is no additional fee for filing the PPH request.

As far as the supporting documents are concerned, at the IPO, the Applicant is expected to submit the copies of all office actions from the JPO, copies of all the claims determined to be patentable by the JPO examiner, their translation, and self-certification of those translated documents. In contrast, at the JPO, the Applicant does not have to submit the copies of the office actions, the claims, and the translated documents, if those documents are available at the IPO website. Only when such documents cannot be retrieved from the IPO website, the JPO examiner will request the Applicant to submit the documents. Further, at both the JPO and the IPO, the Applicant is required to submit the copies of only the non-patent references cited by the IPO examiner and the JPO examiner, respectively, along with the PPH request. Moreover, at both the IPO and the JPO, the Applicant is required to provide a table indicating the correspondence of OLE claims to the OEE “determined to be patentable” claims, when the OLE claims do not completely correspond to the OEE claims. The guidelines also include application forms to be filled by the Applicant for filing the PPH request at the respective offices. The application forms seem simple and have specific sections to specify the abovementioned details.

Once the PPH request is filed at the IPO, the IPO will notify the Applicant in case there is any defect. Within 30 days of receiving such notification, the Applicant has to re-submit the corrected documents. The IPO may accordingly grant or refuse the request. Once refused, the Applicant cannot file the PPH request again. In contrast, the JPO will also provide the Applicant with an opportunity to re-submit the corrected documents before deciding on the request. However, there is no specific time duration mentioned for the Applicant to re-submit the corrected document. Also, even if the JPO refuses the request, the Applicant can still file the PPH request again in a renewed request for participation.

Even when the PPH request is granted, the examiners are only expected to take the grant of the claims in the other office into their due consideration. However, the examiners at the respective offices still have the right to exercise their discretion while deciding on the grant of an application.

The guidelines are well-drafted and provide the stakeholders with a clear overview of the PPH proceedings at both the offices. Further, although the number of applications allowed per year may appear to be low for now,this approach may be opted to first establish a solid foundation of the bilateral PPH program. It would not be unreasonable to expect this number to increase in the coming years. In the meantime, the Applicants would also get a fair understanding of the benefits of this program as the PPH requests are gradually accepted by the respective offices. It definitely is a welcoming step towards ensuring a faster and more-efficient patent ecosystem in both countries.