Fast-tracked examination of patent applications in India

In India, an expedited review of a patent application pursuant to Rule 24C of the 2003 Indian Patents Rules which, to a large extent, allow organisations to reduce the time needed for examination, which may lead to the early disposal of patent applications.

Recognizing that start-ups can drive sustainable economic development and build large-scale jobs, the 'Startup India' initiative of the Government of India has sought to create an ecosystem to strengthen such entities. This environment entails policies that reduce regulatory burdens and offer different concessions that make it easier to do business. The Startup India Initiative, among other items, provides start-ups with certain facilities to easily protect intellectual property rights, such as filing patent applications at reduced costs and quick-tracking the review of such patent applications. The goal of such policies is to foster knowledge and understanding of the value of IP as a tool for commercialising innovation and obtaining a competitive advantage over similarly positioned organisations, in addition to encouraging the start-up community.

A patent is a statutory right granted by the Indian Patent Office to the inventor to use his invention for a period of 20 years from the priority date. The Indian Patent Act, 1970 regulates the law relating to patents.

Mandatory conditions for the grant of the patent to be fulfilled:

• Novelty- The innovation must not be part of the state of the art, i.e. it must be fresh as it was at the date of application.
• Inventive step- In comparison to the prevailing awareness in society, the invention either contains a facet that is technically advanced or has an economic effect (or both) and that function makes it non-obvious to an individual skilled in the art.
•  Applicability in Industry- It needs to be able to be used industrially.

There are five genres of patent applications:

1. A primary patent application- Section 7 of the Indian Patent Act, 1970
2. Patent Cooperation Treaty (PCT) Application
3. Paris Convention Application
4. Divisional Application- Section 16 of the Indian Patent Act, 1970
5. Patents of Addition application- Section 54 of the Indian Patent Act, 1970

Patent rights are territorial in operation and must be obtained individually for each nation on whose market the inventor wishes to present his invention and to create a monopoly. However, owing to the torrential accumulation of patent applications and the consequential deferral in the acquisition of patents in India, many inventors chose to omit the Indian market.

How does expedited processing of does patents work in India

How to apply-

The applicants are expected to file the application on Form 18A together with the payment of the fee by electronic means only, which is as follows:

• INR 60000- For all others
•  INR 25000- For small entities
• INR  8000- For natural persons/start-ups

 

When to apply?

• Similar to the usual request for examination, the request for an expedited process can also be made only after the patent application has been issued, depending on whether or not an application for early publication has been filed. If a request for publication has already been made, the request for expedited review can also be made.
•  However, if no request for publication has been made, it is required to apply for publication (Form 9) along with the request for expedited inspection.
• However, the request must be made within 48 months from the date of priority or from the date of filing of the earlier submission.

Who can apply?

The applicants who may seek a fast-track review of their patent applications, as per the 2019 amendment to Rule 24C, are:

• Applicants who indicated India as the competent International Searching Authority (ISA) or an International Preliminary Authority (IPEA) in their application, or
• Applicants who are a start-up or a small organisation, or
• Applicants who are female natural persons, or
• Applicants who are a department of the Government, or
• Applicants who are statutory institution owned/controlled by the Government, or
• Applicants who are a Government company (Section 2(45) of the Companies Act, 2013), or
•  Applicants who are an institution wholly/substantially financed by the Government, or
•  Applicants who belong to specially notified sectors by the Government, or
• Applicants who are eligible under a bilateral agreement between IPO and a foreign patent office.

Patent Prosecution Highway (PPH)

It refers to a number of initiatives undertaken by patent offices from various jurisdictions to provide expedited patent compliance procedures by sharing information between them. It therefore offers an opportunity for each participating patent office to take advantage of the previous work of the other patent office, with the intention of minimising the workload of the examination and enhancing the quality of the patent.

If the claims in the application are accepted by the first patent office, the applicant shall request, before the second patent office, a timely examination of the related claims in the application. (Application to the second patent office filed) India is currently part of a bilateral three-year PPH programme with Japan starting on 21 November 2019 for an initial period of three years. On 7 December 2020, applications began to be accepted for the second year.

According to the guidelines, however, India can only obtain applications in the technical fields of electrical engineering, electronics, informatics, information technology, physics, civil engineering, mechanical engineering, textiles, automobiles and metallurgy. For PPH applications obtained by Japan, there is no such restriction. Such a request must be filed in India in compliance with Rule 24(1)(j) of the Patent Rules of 2003. However, the applicant may file an application for an expedited review on Form 18A only after the IPO has approved an application (filed on Form 5.1 issued in the PPH Guidelines) for the assignment of special status. On a first-come-first-serve basis, the IPO accepts just 100 applications per year. If the request is lodged in Japan, the submission must be followed by Form 5.2.

With India as the Office of Later Examination (OLE) and Japan as the Office of Early Examination (OEE), the process for expedited examination under this PPH programme is as follows:

• The OLE first determines whether, after obtaining a petition with the documentation as stated, the application may be entitled to the status of an expedited review under the PPH.
•  If the OLE determines that the plea is appropriate, a special status for an expedited review under the PPH is given to the application. If the application does not comply with all the criteria set out above, the applicant will be told of the defects (which must be rectified within 30 days)
• Subsequently, if the errors are corrected, a special status for expedited inspection under the PPH is given to the application or the IPO will issue a notice of a non-designated special rank (the applicant cannot demand for PPH again).

Procedure and timelines of an Expedited Examination

A queue different from that of a regular one, which already contains thousands of applications pending review, is allocated to the applications seeking fast-track scrutiny. Consequently, such applications would be referred to the examiner for review more quickly than the applications for which a standard examination is sought. Thus, in conclusion, by selecting the expedited process, the applicant opts to skip the normal queue of requests for review.

By sending the necessary papers, Form 18A and the requisite fee of Rs.4000 (for natural persons/start-ups), or Rs.15000 (for small entities), or Rs.4000000 or Rs.40000, a prayer for the regular review may also be transformed into an expedited one (for all others).

135 requests for an expedited review were submitted in its pilot year (2016). In 2018-2019, the number grew to almost 615. Therefore, it is clear that this change by the government was a welcome one. In 2016, a patent was issued within 113 days, using an expedited test. The situation, however, is much more advanced in the US and the European jurisdictions than in India.

USA

• In the US, two systems, namely the Accelerated Review and the Prioritized Examination, will fast-track patent applications. The former helps applicants, within 12 months, to receive a patent grant.
• The approval process of newly filed utility and plant patent applications is expedited in a very quick and efficient way under the prioritised review (also known as Track One). Track One requires patent applicants to receive, within 12 months, the final requirement for their patent applications.
•  An benefit of the Track One programme is that, in contrast to the Accelerated Review process that includes the submission of the ESD (Examination Support Document) at the time of filing, it does not require a pre-search examination report to begin the examination process.

EPO

• Applications submitted to the EPO can be expedited through a programme called Speed (Program for Accelerated Prosecution of European Patent Applications).
• Two phases are required for accelerated prosecution, namely 'Accelerated Search' and 'Accelerated Analysis.' By means of a written order, both phases can be activated.
• PACE helps applicants rapidly obtain the Extended Search Report (ESR) and search opinions under the European Patent Convention (EPC), the First Review Report (FER) and/or any correspondence under Rule 71(7) of the EPC.
• However, while India still has a long way to go, initial steps have been taken to strengthen our patent regime.

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