PROCEDURE GUIDELINES FOR PATENT PROSECUTION HIGHWAY (PPH)

Soon after, approval of cabinet on the Patent Prosecution Highway (PPH) which was published as a public notice by Press Information Bureau of India on 20th of November 2019, Indian Patent Office has issued procedural guidelines for the PPH pilot program between India Patent Office (IPO) and Japan Patent Office (JPO). The procedural guidelines got published on the 29th of November 2019.

In the notice published by the Press Information Bureau (PIB), it was mentioned that initially, the Patent Prosecution Highway (PPH) program is to be commenced between India and Japan. The Indian Patent Office (IPO) and the Japan Patent Office (JPO) had commenced a Bilateral Patent Prosecution Highway pilot program consisting of Normal PPH and PPH MOTTAINAI.

The published guidelines elaborate on the procedural requirements that are to be followed for making request for PPH pilot program to IPO as well as to JPO, documents that need to be submitted, and procedure that is to follow in IPO and JPO under PPH pilot program

Further, the guidelines include that the Office of Later Examination (OLE) with which applicants file a PPH request and the Office of Early Examination (OEE) which determines patentability of claims of an application before the OLE would be:

 

 

 

Office of Later Examination    (OLE)

Office of Later Examination (OLE)

PPH request to the IPO

IPO

JPO

PPH request to the JPO

JPO

IPO

The procedural guidelines further include a graphical depiction to clarify procedural requirements under the PPH pilot program through an exemplary case study. The guidelines is according to a Joint Statement of Intent (JSOI) between IPO and JPO, which is annexed to the guideline.

According to the JSOI, and the procedural guidelines published, the upcoming process may be summed up as:

1. The “Guideline” for execution of PPH Program shall be individual practice for either IPO or JPO;

2. There will be ONLY 100 patent applications from each office under PPH. However, as mentioned in point no.: 1, JPO keeps no limit on maximum number of applications from a single applicant, whereas the same subject has been kept under discretion in the IPO, as evidenced in the guideline published from IPO limiting the maximum number of application from the same applicant to 10, which will be reviewed after March 31, 2020;

3. Likewise, as stated under point no. 1, before the IPO, the applicant can NOT request PPH once the request is rejected, however, before the JPO, the applicant may request the PPH again after rejection in a renewed request for participation;

4. Likewise, further, the IPO mandates a verification of translation for the application(s) and examination report(s) in foreign language, whereas, before the JPO, no verification may be required as English has been fixed as the PPH language;

5. Under the PPH pilot program, the IPO shall receive patent applications of domains namely Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy while JPO may receive applications in all fields of technology.

6. Any priority application filed in a country other than the PPH parties either through Paris Convention or through PCT route, for which subsequent corresponding applications are filed under PPH before IPO and JPO, may NOT be granted under PPH; however, this is not applicable to application(s) for which any additional priority from other country(ies) has been claimed;

7. If the examination has already began for an application, a request for PPH may not be granted; and

8. Last but not least, the comparison of granted claims verified translated copy wherever applicable and should be submitted at the time of application for PPH, with the opportunity for expedited examination.

With the commencement of the bilateral program we look forward to expedited the procedure of a patent application that would come under this program. Further, we remain at your disposal for any further inquiries.