Fast track patenting in India is becoming a trend now. Starting with a first set of initiatives to fast track examinations of patent applications domestically, India introduced provisions to request an early examination in [under Rule 20(4)(ii)] and an option to request for expedited examination in 2016 [under Rule 24C of the Patent Rules, 2003 as amended in 2016]. However, the full utilisation of these provisions, particularly the expedited examination, has proved to be cumbersome to patent applicants due to several restrictions such as the higher costs of examination and eligibility requirements under Rule 24C. While, through the Patent (amendment) Rules, 2019, the Indian Patent office (IPO) has broadened the scope of Rule 24C, tech giants such as Mitsubishi, Honda, Qualcomm, to name a few are still not eligible. Nevertheless, for Indian start-ups, these provisions have granted them patents within a couple of months of filing. It is a feat for IPO as well.
Mr. Editor comments:
On a bilateral front, the IPO has sought fast track patenting under the patent prosecution highway (PPH) for the first time but only on a trial basis; a patent application, claiming priority from Indian or Japanese patent applications, filed before the counterpart patent office (IPO or JPO) is allowed for an accelerated examination under this scheme. The patent applications under Rule 24C(1)(j) should fall within the prescribed technical field of the invention (list does not include pharmaceutical, chemical inventions, etc.).On the contrary, JPO allows inventions in all fields of technology. At first glance, the restrictions appear, perhaps, suitable for the socio-demography of India; but aren’t these restrictions providing a freeway to the Japanese applicants? The patent prosecution highway may not be as beneficial as it appears in the light of the exhaustive Indian patent regime. Why? Ok! I’ll explain below.
In normal terms, PPH was designed to accelerate the patent examination process by collective efforts between patent offices of two or more countries. Accordingly, as per the normal PPH procedures, applicants can claim accelerated examination for an application filed at the Office of Second Filing (OSF), only after the Office of First Filing (OFF) has granted a corresponding patent application. It does not work vice versa.
Speaking specifically about the IPO-JPO PPH Pilot Program, it encompasses both the PPH systems, Normal PPH and PPH Mottainai, which are now well functioning between a lot of countries. The latter was introduced to fill the drawbacks of the former, which allowed applicants to proceed without waiting for OFF to examine and grant the application before moving to OSF. Accordingly, whichever patent office (OFF or OSF – IPO or JPO) examines the application first would become the Office of Earlier Examination (OEE) – and the latter (Office of Later Examination OLE) can leverage upon the findings of OEE.
Such collaboration between the different patent offices helps them grant a speedier patent while demounting the huge backlog of patent applications. For example, after a patent is granted at OEE, the applicant can amend the claims of the corresponding patent application before OLE, aligning them with the granted claims. Thus, claims before OLE are then sufficiently matured and vetted, making the work easier for the examiners of OLE. However, these agreements may face challenges for the reasons given below:
- Different opinions on the inventive step among the patent offices – Independence of Patents (Article 4bis, the Paris convention, 1883)
Opinions on the inventive step vary in patent law. The inventive step analysis depends on the understanding of a ‘person skilled in art’ in light of the combination of documents relevant to the field of the invention. At times, what appears inventive to one examiner might appear obvious to another. Given the example of the ecosystem between EPO and its member patent offices, a patent granted by EPO could be revoked by the patent office of another Member state. If the patent lacks the inventive step in one member state, it may not be considered as lacking inventive step in another member state in view of the same prior art. Thus, PPH could influence the decision of one patent office over another and the ‘independent of patents’ could be indirectly diluted.
- Section 3 of the Indian patents act;
One of the most highly comprehensive and globally criticised provisions is Section 3 of the Indian patents act. ‘ are not inventions’ in view of Section 3 is patentable in many countries like JP, EU, US, CN, etc. Agreed! IPO has excluded pharmaceutical and chemical inventions from PPH with Japan. But there could be multiple reasons for the same, such as:
- Given the fact that the Indian generic industry is the strength of India and anything that meddles with this fact, including any provision of the patent act would have an adverse effect on the economy of the country and public health, schemes like PPH could affect the examination process at IPO. Thus, patent applications in these fields are strictly scrutinised under provisions like Section 3(c), 3(d), 3(i), 3(j) and 3(p). Accordingly, in my opinion, it was wise to exclude these kinds of inventions. Moreover, this exclusion is commonly followed in PPH schemes between many countries.
- Secondly, according to the Annual IP Reports of IPO and statistics of WIPO, since years, Japan has been the 2nd highest contributor of convention / PCT national phase filings in India. Also, Japanese applicants like Mitsubishi Electric Corporation, Honda Motor Co. Ltd., etc. are among the top ten patent applicants in India in the field of Electrical, Mechanical, Computer/Electronics and General Engineering. Hence, it appears that the IPO felt absolutely no need to allow for expediting patent applications falling under the technical fields other than prescribed. Thus, it is assumed that the Japanese applicants would never lobby to include medical-related invention in PPH and therefore, only the principle fields of interests of stakeholders in Japan have been accounted and provided for.
2. Vulnerability to revocation and opposition:
Due to the superior quality of patent examination in EPO and USPTO, the IPO has often relied on examination reports and prosecution history in these jurisdictions, for examining a corresponding Indian application. As per PPH, IPO would grant the exclusive rights in India based on JPO’s examination,
following redundancy. However, in normal circumstances, when PPH is not requested and application is even filed in USPTO or EPO, IPO would rather mostly cite prior art based on these patents offices. Furthermore, the granted claims of the corresponding applications filed before USPTO and EPO are mostly narrower in scope (sometimes even rejected) than what is granted by JPO. That said, if the counterpart patent application is not filed in EPO, then there might be an ovelap in cited prior art and examination of the corresponding applications filed before JPO, USPTO and IPO. Hence, PPH might create vulnerable Indian patents for the applicants and allow easy access for competitors to file revocation and opposition pleas and clogging the Indian patent system.
3. Linguistic difference: Alistair Kelly, a patent examiner at the UK IPO, while handling the PPH schemes with JPO once said, “the linguistic differences between the patent office might slow the PPH process”. However, given the decade of long understanding between JPO and other patent offices dealing in English has probably overcome the linguistic differences. But still differences in languages between both JPO and IPO could be a soft hurdle.
4. Claim-type differences and higher costs: Some differences exist in claim categories allowed by IPO and JPO, which leads to additional costs for claim amendments. For example, IPO has stopped allowing omnibus claims, while JPO commonly allows such claims. Additionally, a patent application during prosecution before OEE generally undergoes claim amendments and therefore, the corresponding application before OSE has to be amended conforming with granted claims. Accordingly, applicant has to bear additional costs for claim amendments in accordance to practice of OSE.
Interestingly, as per IPO-JPO PPH, an Indian patent application can only be allowed under PPH provided if it has not been referred to the examiner for examination in India, after filing of the Request for Examination (RFE); as practice, the applicant is notified of the issuance of office action (FER) and not about the reference of the application to the examiner which is the internal matter of IPO. This means the applicant would first amend claims of the application to make them in-line with the corresponding granted JP claims and then file a request for PPH, unaware whether his patent application has been referred to the examiner or not. While doing so, the applicant would in anyway have to pay fee for claim amendments and meanwhile, the application was already referred to the examiner, the fee (professional and office) for filing amendments would be wasted.
Thus, a way forward should be either to keep the applicant informed about the step of referring the patent application to examiner or accept the PPH request until notified of the issuance of office action. As the objective of the PPH is to expedite the process, it is a better option to keep the applicant informed about the step of referring to the examiner. This would reduce some burden of unnecessary costs to the applicant.
Lastly, based on the above discussion, it will be interesting to see how IPO grants the PPH applications and allows the patent claims in India based on the JPO’s examination. For example, in an Indian patent application no. 201917045291, the applicant has been granted PPH. The First Examination Report (office action) was issued within four months (February 27, 2020) of the date of filing (November 11, 2019) and cited prior art corresponds to the counterpart JP application. Thus, an unprecedented speedy examination has achieved the objective of the IN-JP PPH pilot program. However, in this particular case I am curiously waiting to analyse, or rather compare the IPO’s examination report (FER) with the examination of the corresponding applications filed before the USPTO and other patent offices.Any further development in such cases before IPO on the basis of examination reports of the major patent office would be fascinating to everyone. Accordingly, as said above, the competitors would be keeping a sharp view over patents granted in India via the PPH route – might be on the basis of the examination of corresponding applications filed in USPTO and EPO. Nevertheless, what left me wondering is the allowance of PPH in the said matter, as one part of it falls under the excluded category of the PPH scheme, i.e. A61F – IPC (MEDICAL OR VETERINARY SCIENCE; HYGIENE)– PCT page clearly specifies this and IPO website has even categorised this application under BIO-MEDICAL field. Thus, I ask a question to all, isn’t PPH a freeway, rather than a highway? That said, it is better presume that the granted claims would not fall under the excluded category.