Procedure Guidelines for PPH Procedure between IPO & JPO issued

by mehtaip, posted in Ankush Mehta, Guidelines, IPO, JPO, Mehta & Mehta, Mehta & Mehta Associates, PPH, PPH MOTTAINAI, Uncategorized

The procedure guidelines for handling applications under Patent Prosecution Highway (PPH) between Indian Patent Office [IPO] and Japan Patent Office [JPO] have now been published by IPO.

The Bilateral Patent Prosecution Highway pilot program (hereinafter referred to as “PPH Pilot Program”) consists of Normal PPH and PPH MOTTAINAI based on the Joint Statement of Intent (JSoI).

General Conditions of IPO-JPO PPH:

These Guidelines set the procedure to be followed while requesting expedited examination through the PPH pilot program between IPO & JPO. Said guidelines cover scope of the Normal PPH and the PPH-MOTTAINAI.

The difference between normal PPH & PPH-MOTTAINAI is that under former system Office of First Filing (OFF) has to provide its examination results before any of the other offices accept PPH requests, however, under latter system an applicant can make PPH requests at the Office of Later Examination (OLE) by using the examination results of the Office of Earlier Examination (OEE), provided that the OEE and OLE have a PPH MOTTAINAI agreement.

The PPH pilot program between IPO and JPO has commenced on November 21, 2019 for a period of three (3) years. Both the patent offices will start accepting PPH requests on December 5, 2019. At present, the number of the requests for the PPH in each office has been respectively limited to 100 cases per year. Additionally, IPO will limit the number of requests for the PPH made by same applicant (who has filed applications either alone or jointly) per year from time to time. An applicant, who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year and this number will be reviewed after March 31, 2020.

It is important to note that previously when expedited examination was first introduced in India, an upper limit was set for number applications that could have been taken under said examination. However, after initial test run, said upper limit was withdrawn. So we may expect similar increase / withdrawal in initial limit for number of PPH applications that may be accepted during future review of present system.

Requirements for Requesting PPH:

Requirements for filing of PPH have been broadly divided into following 3 categories:

  • Common requirements;
  • Requirements for the PPH request to the IPO; and
  • Requirements for the PPH request to the JPO.

Common Requirements:

The following requirements are applicable for all cases in which PPH is opted:

  1. Both the OLE application on which PPH is requested and the OEE application(s) forming the basis of the PPH request shall have the same earliest date (whether this is a priority date or a filing date).
  2. Patent applications belong to a patent family of which at least the earliest application was filed with the IPO or the JPO acting as a national office or, under the PCT, acting as a Receiving Office (RO).
  3. At least one corresponding application exists in the OEE and has one or more claims that are determined to be patentable / allowable by the OEE. Claims are “determined to be allowable / patentable” when the OEE examiner clearly identified the claims to be allowable / patentable in the latest office action, even if the application is not granted for patent yet.
  4. All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable / patentable in the OEE. A claim in the OLE which introduces a new/different category of claims to those claims indicated as allowable in the OEE is not considered to sufficiently correspond. However, any claim amended / added after participation in PPH need not sufficiently correspond to claims allowable under OEE.
  5. PPH cannot be requested if substantive examination has begun. That is, in JPO it should be requested before Examiner accepts its designation and in IPO it should be requested before application is allotted to Examiner.

Requirements for the PPH request to the IPO:

The IPO has limited acceptance of application for PPH under present pilot program to limited technical fields namely:

  • Electrical;
  • Electronics;
  • Computer Science;
  • Information Technology;
  • Physics;
  • Civil;
  • Mechanical;
  • Textiles;
  • Automobiles; and
  • Metallurgy.

However under exceptional cases, if IPO is of the opinion that application is of another technical field than those stated above, it will treat application as non-PPH application with a reasoned order.

It has been stated that application under PPH may be filed under Rule 24C(1)(j) of Patent Rules 2003 of India on Form – 18A within 48 months from first Priority Date. Fees for PPH will be same as that for filing of expedited examination under other circumstances.

Further, request for expedited examination under PPH will have to be accompanied by request for early publication unless application has already been published in Official Journal by IPO or a request for early publication has already been requested. Generally, IPO publishes application in official journal within 1 month after expiry of 18 months from first priority date or 1 month from filing of national phase entry in India (where national phase is requested after 18 months from first priority date).

Finally, request for expedited examination shall be filed along with information for participation in the PPH pilot program in prescribed format.

Requirements for the PPH request to the JPO:

In a welcoming move, JPO has agreed to receive Patent applications in all fields of technology. Thus applicants from filed missing in the list given by IPO may opt for examination in India (which is comparatively economical, does not require translation and has recently seen quick prosecution) and opt for PPH in JPO.

Like IPO, while requesting expedited examination under PPH with JPO, circumstances concerning an expedited examination must be explained by the applicant in prescribed format.

Finally, no additional official fees will be levied for filing PPH request in JPO.

For ease, brief of said requirements has been stated in tabular format as follows:

Common Requirements Requirements for the PPH request to the IPO Requirements for the PPH request to the JPO
Both the OLE application on which PPH is requested and the OEE application(s) forming the basis of the PPH request shall have the same earliest date (whether this is a priority date or a filing date). Under this PPH Pilot Program, the IPO will receive Patent applications only in the technical fields of Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy. JPO will receive Patent applications in all fields of technology.
Patent applications belong to a patent family of which at least the earliest application was filed with the IPO or the JPO acting as a national office or, under the PCT, acting as a Receiving Office (RO). Application under PPH may be filed under Rule 24C(1)(j) of Patent Rules 2003 of India on Form – 18A within 48 months from first Priority Date. Fees for PPH will be same as that for filing of expedited examination under other circumstances. There shall not be any additional official fee for filing PPH request in JPO.
At least one corresponding application exists in the OEE and has one or more claims that are determined to be patentable / allowable by the OEE. Request for expedited examination shall be filed along with information for participation in the PPH pilot program. Circumstances concerning an expedited examination must be explained by the applicant.
All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable / patentable in the OEE. Except where the application has already been published or a request for publication has already been filed, request for expedited examination shall be accompanied by a request for publication.
Substantive examination of the OLE application for which participation in the PPH is requested has not begun.

Documents to be submitted while requesting PPH:

Documents to be submitted while requesting PPH with IPO (IPO acting as OLE):

If any document is in a language other than English, IPO will accept self-certified English translation of the same.

While requesting PPH, Application will be required to submit:

  • Copies of all office actions (which are relevant to substantial examination for patentability in the OEE) which were issued for the corresponding application by the OEE with applicable translation;
  • Copies of all claims determined to be patentable/allowable by the OEE along with applicable translation;
  • Copies of non-patent literature cited by OEE examiner. However, cited patent documents are not required unless specifically requested by IPO; and
  • The applicant requesting PPH must submit the claim correspondence table in prescribed format, which indicates how all claims in the OLE application sufficiently correspond to the patentable / allowable claims in the OEE application.

Documents to be submitted while requesting PPH with JPO (JPO acting as OLE):

For present PPH program, even JPO will accept English translation of relevant documents. Machine translation (available on OEE’s dossier access systems) will suffice; however, demand may still be raised for fresh translation from the Applicant.

Documentation required while submitting request for PPH are primarily same as those for filing PPH with IPO. However, if Office actions and copy of claims indicated to be patentable / allowable in the OEE along with relevant translations thereof are available to Examiner via OEE’s dossier access systems, copies thereof are not required.

Procedure to be followed while handling expedited examination under PPH:

Common procedure:

Upon receipt of request under PPH along with relevant documents as mentioned above, OLE will finally decide if application is entitled to the status for an expedited examination.

Procedure specific to IPO:

Where applicant fails to meet prescribed requirements for requesting examination under PPH, they will be notified by IPO and will be given 30 days’ time period for correction of said defects by submitting necessary documents within the said time period.

If defects are corrected, application will be assigned special status for expedited examination under PPH program.

However, if defects are not resolved within prescribed period, notification to such effect will be issued by IPO. Under such circumstances, applicant cannot request examination under PPH again.

Procedure specific to JPO:

Procedure for handling request for examination under PPH remains the same except following 2 differences:

  • Time period for replying to discrepancy notice has not been identified in joint guidelines issued; and
  • Even after issuance of final notification of not assigning special status for expedited examination under PPH, Applicant may once again file fresh request for participation under PPH.

Resolution of differences by Domestic Laws:

Where there is a difference in domestic laws / regulations, patentability of an application filed under PPH program will be examined as per domestic laws and regulations of the Office concerned. 

For example, examining guidelines for examining computer related inventions are different in IPO and JPO. Hence, if examination is requested under PPH for such an application with IPO, test for patentability will be conducted as per Indian requirements.

Our views:

We believe this is a step in positive direction and will streamline patent protection for Applicants interested in both jurisdictions. We hope that cooperation under PPH will only enhance between two jurisdictions in near future and present program will also set precedent for India to enter similar models with other major jurisdictions.

Contributor(s)

Contributor to present post is Ankush.

Disclaimer:  Views / opinions expressed in present update are solely that of the contributor(s) and are for explanatory / update / informational purposes only and which cannot be quoted in any legal proceedings and will have no legal purpose. Further, same may vary from time to time and case to case. It is neither intended to advertise nor solicit the Firm in any way whatsoever, nor is it purported to create an attorney-client privilege communication. For any clarification and further information, you may contact us at mehta@mehtaip.com.