Recognising that startups can drive sustainable economic growth and generate large scale employment, the Government of India’s ‘Startup India’ Initiative has sought to develop an ecosystem to strengthen such entities. This ecosystem includes policies that reduce regulatory burdens and provide various concessions that make ‘doing business’ easy. Among other things, the Startup India Initiative provides certain facilities for startups to easily secure intellectual property rights, such as filing patent applications at reduced cost ( also read ) and fast-tracking the examination of such patent applications. Besides encouraging the startup community, the objective of such policies is to promote the awareness and understanding of the importance of IP as a tool to commercialize innovation and obtain a competitive edge against similarly-placed entities.
Obtaining a patent is usually a lengthy process as compared to other types of IPRs. A timeline of a patent application includes publication of the patent application after eighteen (18) months from the date of filing the application or the date of priority of the application, whichever is earlier. Thereafter, when an examination request is filed, the patent application gets in an examination queue and waits for being referenced by a Controller to an examiner at the IPO. However, such a reference is made in the order in which the request for examination was filed. Ordinarily, it takes another at least six months to one year for the Indian Patent Office (IPO) to issue a first examination report alone. However, with the provision of expedited examination of patent application under rule 24C of the Indian Patents Rules, 2003, startups can reduce the examination period by a large extent, which may result in the early disposal of patent applications.
Fast-tracking the examination of patent applications
The process of fast-tracking the examination of patent applications involves the following steps:
- A request for expedited examination in Form 18A needs to be filed, accompanied by a request for publication in Form 9 (in case the application is not yet published or when a request for publication is not filed previously);
- The corresponding fees for filing Form 18A is INR 8000/- and for filing Form 9 is INR 2500/-.
- Further, a request filed for a regular examination under rule 24B of the Indian Patents Rules, 2003 may be converted to a request for expedited examination by submitting forms as mentioned in step 1. Here, the fee for filing Form 18A is INR. 4000/-.
Timelines for fast-tracked examination
The first leg of a fast-tracked examination process is the publication of the patent application by the Controller within one (1) month from the date of filing a request for publication. Contrast this period with the normal, default timeline, where the application gets published after expiry of eighteen months from the date of filing of the application or the date of priority of the application, whichever is earlier.
After the publication of the application, under rule 24C of the Patents Rules, 2003, the Controller refers the request for expedited examination to the examiner, wherever such requests have been received, in the order of the filing of such requests. Once an application is referenced to the examiner, the examiner is under obligation to make an examination report within one (1) month, but not exceeding two (2) months from the date of reference of the application to the examiner by the Controller. A first examination report may be issued by the IPO within the next forty-five (45) days from the date of receipt of report by the Controller from the examiner. In effect, therefore, a first examination report is issued within three and a half (3.5) months from the date of reference of the application to the examiner by the Controller.
Thereafter, the applicant must respond to the first examination report and put the application in order for grant within six (6) months (or with extension of additional three months) from the date on which the first examination report is issued. After that, the Controller is under obligation to dispose the application within a period of three (3) months from the date of receipt of the last reply to the first examination report, or within a period of three (3) months from the last date to put the application in order for grant, whichever is earlier.
The timeline fixed by the IPO for expedited examination is designed to significantly reduce the time taken to grant a patent. As per these special timelines, the entire examination phase of a patent application may be completed within a year’s time from the date of filing of the application. Of course, this depends on whether the timelines have actually been adhered to, and that no pre-grant opposition has been filed in connection with the application concerned.
The early grant of patents provides several advantages to startups, not least that it helps showcase their technical acumen, which, in turn, helps build investors’ confidence and attract further investors. By corollary, the early grant of patents also increases the valuation of startups, and may help in raising more funds in various funding rounds.
The expedited examination process for patent applications filed by startups is only one of several initiatives to boost the startup economy in the country, but is arguably, a key component for startups that are engaged in technical innovation. If used and implemented effectively, this policy can be a game-changer, not just for startups, but for the Indian patent landscape and the economy as a whole.