India’s Patent Prosecution Highway is now in operation, allowing expedited examination of patent applications.

A bilateral agreement between the Indian Patent Office and the Japan Patent Office is now live. The pilot programme allows Indian companies to receive faster examination of their applications in Japan and vice versa. The Patent Prosecution Highway (PPH) programme could extend to further countries in time.

Call it chance or good luck, but just a day after FICPI Delegates met with Indian Patent Office officials on 20 November 2019, the Indian Cabinet approved the long awaited proposal for adoption of the Patent Prosecution Highway programme by the Indian Patent Office (IPO) with patent offices of other countries or regions of interest.

The PPH programme is intended to lead to the following benefits at the Indian IP office:
i.            Reduction in time to dispose patent applications.
ii.            Reduction in pendency of patent applications.
iii.            Improvement in quality of search and examination of patent applications.

The PPH programme came into being between the Japan Patent Office (JPO) and Indian Patent Office (IPO) on 21 November 2019, with Offices starting to accept requests from 5 December 2019.

Under a three-year pilot programme, IP India will only receive PPH requests for patent applications in certain specified technical fields, namely: Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy.

JPO can receive PPH requests for applications in all fields of technology.

The number of requests will also be limited to 100 cases per year per Office and the number of requests for the PPH from the same applicant will also be limited to 10 per year under the pilot.

A prescribed form must be used to file requests under the PPH programme, found under Chapter 5 of the guidelines.

The PPH should also enable Indian companies to receive accelerated examination of their applications in Japan, based on the examination at the Indian Patent Office.

The scope of the programme may be extended in the future, as decided by the Indian Commerce & Industry Minister (DIPP). The IPO will frame their own guidelines for implementation of the programme in due course.

FICPI’s view and involvement 

FICPI-India welcomed delegates from FICPI international to Mumbai for a meeting with the Indian Patent Office on 20 November. FICPI’s President, Julian Crump was in attendance along with Elia Sugrañes and other FICPI members from the UK, the United States and China. FICPI-India, the National Section for India, was represented by its President, Archana Shanker, as well as Swarup Kumar and Calab Gabriel. Regular FICPI meetings with Offices provide the opportunity to build strong relationships and to work closely with jurisdictions through shared common goals, concerns and a commitment to quality.

FICPI’s strong cross-country links across 86 countries and regions ensures that FICPI makes the world a little bit smaller and that IP attorneys can bring insights and counsel from a wider external perspective. National Sections and National Associations ensure that members have timely access to updates from FICPI’s Study & Work Commission, special interest Commissions, and Professional Excellence Commission, as well as addressing issues relevant to those members.

Next steps

  • Familiarise yourself with the full Procedure Guidelines for the Patent Prosecution Highway between the IPO and JPO here.
  • Get in touch with members of FICPI’s National Section for India here, including this article’s author, Mr Swarup Kumar, FICPI’s EXCO delegate for India
  • Get in touch with members of FICPI’s National Association for Japan here.