Patent prosecution is the centerpiece of the process of obtaining a patent. The proceedings during prosecution serve as important legal guidance on the patentability of the invention, and successful prosecution is key to ensuring that patent rights are protected.
Patent prosecution in India is not merely the interaction between an applicant and the Indian Patent Office (IPO), but it is a test of the legal and technical competencies of an invention.
The first stage involves filing an application, which is followed by its publication by the Patent Office. After this, the application undergoes prosecution which involves examination by the Patent Office, which is generally followed by a hearing before the Controller. For more on patent prosecution and timelines for the same, please see: https://www.obhanandassociates.com/blog/timelines-in-prosecuting-an-indian-patent/
Examination happens according to the order of the date of filing of Request for Examination (RFE). Typically, it takes 12- 36 months for grant from the date of the RFE. Generally, a First Examination Report is issued. In most cases, a hearing notice is also issued. Rarely, a subsequent or a second examination report is issued.
The prosecution of patent application is known to be lengthy and can take a substantial amount of time depending on the underlying invention. However, the examination of a patent application in India can be expedited under certain conditions.
A request for expedited examination can be filed at any time within 48 months of the date of filing or date of priority, whichever is earlier. But this facility is not available to all applicants. The IPO only entertains a limited number of requests for expedited examination in a year. This number is notified to the public at the start of the calendar year. Once this limit has been reached, no other application for expedited examination will be entertained. Therefore, a request for an expedited examination must be filed at the earliest, preferably at the start of the calendar year.
Once the conditions for an expedited examination (discussed below) are met, the applicant is well within their rights to convert a regular examination request into an expedited examination request. This can be done by making a request in the prescribed format and applying the difference in the prescribed fees.
Requirements/Conditions for Expedited Examination
An expedited examination can be sought if the conditions below are fulfilled:
- The applicant must be one of the following:
- a start-up;
- a small entity;
- female applicant;
- in case of joint applicants, all the applicants are natural persons, and at least one of those applicants is a female;
- a department of the Government;
- an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
- a Government company;
- an institution wholly or substantially financed by the Government;
- The application pertains to a sector that has been notified by the Central Government.
- In the case of a National Phase application, India is chosen as the competent ‘International Searching Authority’ or elected as an ‘International Preliminary Examining Authority’ in the corresponding PCT application.
- The applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between the IPO and a foreign Patent Office.
Thus, if any one of the above conditions are fulfilled, an application for an expedited trial may be granted. In addition to this, a request for early publication is also required to be filed, provided that the application has not already been published.
The following may expedite the grant of a patent application:
- Filing a request for an early publication of the application (as an application is taken up for examination only after it has been published).
- Filing a request for examination along with the application itself.
- In case of a National Phase application, filing an express request for examination before the expiry of 31 months’ period from the priority date. Note that an express request for examination can be filed to initiate the examination of a National Phase application before the expiry of a 31-month period.
- Filing a request for expedited examination, if the patent applicant qualifies.
- Filing a response to the First Examination Report at the earliest.
- Filing all the necessary formal documents at the earliest.
Patent Prosecution Highway
Patent Prosecution Highways (PPH) are programmes that aim to speed up the patent prosecution procedure. This is done through an information-sharing mechanism between offices or even countries in some cases. India has a PPH pilot programme in the form of a bilateral agreement with the Japanese Patent Office (JPO). This pilot programme is for a trial period of three years and began in November 2019.
Under the present program, the IPO shall receive patents only in the following fields:
- Electrical Engineering
- Computer Science
- Information Technology
- Civil and Mechanical Engineering
The JPO similarly receives Indian patent applications, although they do not have a technology-restriction like the IPO. A request for expedited examination must be filed by the applicant under the programme along with necessary information and documents. As this is currently a trial, the number of requests filed under the PPH at the IPO is limited to 100 cases a year. Requests for expedited applications are entertained on a first-come-first-served basis. An applicant who has filed a patent application, either alone or jointly with any other applicant, can file up to 10 PPH requests at the IPO in a year. In addition, one could effectively access PPH with other jurisdictions through non-bilateral routes, although these entail more complex processes (see here, for a more detailed explanation on PPH: https://www.obhanandassociates.com/blog/fast-tracking-through-the-patent-prosecution-highway-in-india/).
Appeals form an important part of the patenting process. They are central to the dispute redressal mechanism available to applicants upon the refusal of a controller’s decision in relation to a patent application. In India, the following options are available to applicants:
- The applicant can make an application to the Controller for a review of their decision. This application must be made within one month from the date of communication of the decision to the applicant.
- The applicant may make an appeal to the High Court. However, this appeal must be made within three months from the date of the decision of the Controller.
The patent process in India can be time-consuming, bureaucratic, and overwhelming. But with due care and attention to detail, it can be successfully navigated. The patent application process in India allows for appeals against rejections as well as an effective withdrawal mechanism. The provisions for expedited grant and expedited examination provide for faster methods of prosecuting patent applications. And initiatives such as the PPH are a step towards streamlined patent applications through international co-operation. Critically, the number of applications for both expedited examinations and PPH remains limited. While these may increase in the future and allow more applicants to take advantage of faster prosecutions, most applicants should be prepared to go through the standard processes as detailed here.