With the ever-increasing globalization, the importance of Patents as an exclusive right granted for inventions is increasing at a significant rate all over the world. As the numbers of patent applications being filed in different countries are increasing at an rapid rate, duplication of work is increasing amongst the patent offices. In order to resolve this issue, the concept of ‘Patent Prosecution Highway’ (hereinafter referred as “PPH”) was introduced. PPH is a set of initiatives for providing accelerated procedures for patent prosecution by sharing information between patent offices.
After the introduction of PPH the process of taking legal action gets accelerated as the concerned patent offices share information and help identify the patent application first.
India's relations with Japan were always tranquil and free of any kind of dispute. India and Japan have been standing by each other in times of need. Japan's image in India has historically been positive as exchanges between India and Japan can be traced from the 6th century A.D., when Buddhism was introduced to Japan.
India and Japan are partners in peace, carrying a complementary responsibility of boosting the security, stability, and prosperity of Asia and nurturing equitable development. At the beginning of the 21st century, India and Japan resolved to elevate their bilateral relationship to a new level. In May 2017, the Japan Patent Office and the Office of Controller General of Patents, Designs & Trade Marks (CGPDTM) of India signed an action plan, where both the bodies decided to perform new initiatives with regards to Intellectual Property such as following-up training courses for new Patent Examiners of CGPDTM or sending officials who are well-versed with Patent Prosecution Highway to India.
Later, in 2018, the Prime Ministers of India and Japan intensified their cooperation for building and escalating the scope of Intellectual Property Rights by intensifying the India-Japan economic fellowship. They mostly focused on patent prosecution leading towards key transformational initiatives such as "Make in India", "Skill India" and "Clean India Mission", by sharing resources and advanced technologies. This program proved to be beneficial for both the countries as the Japanese companies could then request for expedited examinations in India based on their applications whose claims were determined to be patentable in Japan. Applicants were able to acquire patents swiftly and expand their businesses smoothly in India.
One of the most dignitary developments in the economic relations between Indian Patent Office (IPO) and the Japan Patent Office (JPO) is the implementation of pilot program of Japan-Indian Patent Prosecution Highway (PPH) in the first half of the fiscal year of 2019 as notified by the CGPDTM vide the official website. Under PPH, participating patent offices have allowed applicants who have received a final ruling from a first patent office, to get at least one claim. The applicant may request fast track examination of the corresponding claim(s) in a corresponding patent application that is pending in the second patent office.
The following points are to be noted while submitting a request to IPO under the said PPH program:
- The number of requests for the PPH in IPO will be limited to 100 cases per year on a first come first serve basis.
- An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year.
- Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed Form 5-1 under Chapter 5 of the PPH guidelines.
- An applicant/authorized agent can file the request for expedited examination in Form 18A only after the request for assigning special status filed on Form prescribed in Chapter 5 is accepted by IPO.
- The decision on Acceptance/Rejection/Defect noticed will be communicated to the applicant/authorized agent through email as well as a message on the efiling portal.
- In case of defects in Form 5-1, the applicant will be provided an opportunity to rectify the defects within 30 days from the issue of notification of defects by IPO.
- Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.
This has been a great initiative from both countries aiming to commence a bilateral Patent Prosecution Highway Pilot Program consisting of normal PPH and PPH MOTTAINAI (commonly referred to as “IPO-JPO PPH Pilot Programme) facilitating the examination of patent applications commonly filed at offices in both nations.