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Express Patent Examination in India

April 18, 2022

By Johny Solomon Raj and Swaraj Singh Raghuvanshi

Patent rights have always played an important role in driving innovation around the world. The Patent Rules were amended in 2016 with the sole purpose to keep pace with the global standards for granting a patent. Pursuant to the amendment of the Patent Rulesa provision of expedited examination was introduced for an applicant who indicated India as a competent Indian Search Authority (ISA) or International Preliminary Examination Authority (IPEA), or is a start-up.

Express/ Expedited Patent Examination- India

After filing a patent application, the request for examination is required to be filed with the Indian Patent Office, in order to put an application for the examination. The request for examination of a patent application can be filed by applicant or any person interested within 48 months from the earliest priority date of the first mentioned patent application on payment of the prescribed official fee.

When to apply for Express Patent examination?

In India, applications are examined in the order of the filing of request for examination. Therefore, a request for examination of a patent shall be filed soon as possible. Also even if the Request for Examination is filed before publication of the application, it is taken up for examination only after publication. Therefore, in many cases specifically ordinary applications filed with the Indian Patent Office, a Request for early publication on Form 9 shall also be filed so that Indian Patent Office can take up the application for examination as soon the application is published in case the applicant wants his application to be taken up by the patent office early for the purpose of examination. Normally, as per Section 11A(1) read with Rule 24, a patent application gets published after 18 months from the earliest priority date as per the provision of Section 11A(1) of Indian Patents Act, 1970 read with Rule 24 of Patents Rules, 2003, however, if a request for early publication is filed under Rule 24A and on Form 9 then the application is published within one month of making such request. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from date of priority).

Procedure of Expedited Examination:[1]

The key benefit of expedited examination is that the patent application for which fast-track scrutiny is requested will be assigned to a queue distinct from a normal examination queue. Therefore, patent applications that have been queued for expedited examination will be assigned to an examiner for examination far sooner than those that have been queued for regular examination. The procedure to be followed is time bound once the application is queued for expedited examination to the examiner. The procedure of expedited evaluation in consonance with the timelines can be understood from the given flowchart:

 

 

The patent examination process can be expedited by using different options available:

Express Patent examination or Expedited Patent Examination

A request for express examination can be made in respect of the PCT national phase applications filed in India. In case of national phase applications, the application will be taken up for the examination only after the expiry of 31 month from the priority date.

Sometimes the applicants would wish to enter National Phase application in India much earlier than the 31 months deadline. In such a case, if the applicant wishes the patent office to take up there application for examination much before the expiry of the 31 months deadline, then the applicant may file a request for express examination of patent application before the 31 months deadline by making a request on Form 18 under Rule 20(4)(ii). The objective of express request for examination is to request the Indian Patent Office to examine the national phase application before the expiry of 31 months.

Expedited Patent examination- Form and Requirements

The request for expedited examination can be filed by eligible applicants on Form 18 A under Rule 24C and request the Indian Patent Office to accelerate the examination of patent application. A request for publication on Form 9 must be filed along with request for expedited examination unless the patent application has already been published.

Who can file the request for expedited examination?

As per the recent amendments in Indian Patent Act, 1970, an applicant can make a request for expedited examination if applicant:

 

  • Is a Start-up as defined under rule 2(fb) of the Patent Rules, 2003; or
  • Is a small entity as defined under rule 2(fa) of the Patent Rules, 2003, or
  • Is a female natural person; or
  • Has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application; or
  • Is a Government company (Section 2(45) of the Companies Act, 2013); or
  • Is an institution wholly/substantially financed by the Government; or
  • Is a government undertaking in accordance with section 2(1) (h) of the Patent Act, 1970 in case of an Indian applicant, or is a similar entity in case of a foreign applicant; or
  • belong to a part of Government’s “specially notified sectors”; or
  • Is eligible under an agreement between the Indian patent office and another participating patent office for the processing of an international application.

Patent Prosecution Highway (PPH)

It refers to a bilateral agreement between the Indian Patent Office and other foreign patent offices to provide a speedy disposal of the patent application on the basis of the examination carried out in other patent offices. The application under PPH may be filed in accordance with the provisions of Rule 24C(1)(j) of Patents Rules 2003. [2]The primary objective of this agreement is to speed up the process of disposal of patent applications. On the other hand it provides a better quality patents and minimizes the examination workload. If the claims are approved by one patent office, the applicant can request the other patent office for speedy examination of the corresponding application pending in other patent office.[3]

Currently India has signed this bilateral agreement with Japan, which allows an applicant to file a request for expedited examination under PPH if the corresponding Japanese application is allowed by the Japan patent office. The Indian Patent Office is accepting only 100 applications per year under PPH on first come first serve basis.  [4]

Conclusion:

The planned steps taken to create a wider category of applicants who may apply for the expedited examination is an encouraging step in the right direction for inventors to get their invention patented expeditiously. It is observed from the table attached below herein that filing of requests for expedited examination is increasing year by year as the application under this category are examined and processed expeditiously so that in majority of cases grant/final disposal is within an average time of one year from the date of receipt of request for expedited examination. [5]

After the commencement of Rule 24C of The Amended Patent Rules, 2016 tremendous results have been yielded whereas some patents have already been granted. For instance, by opting for expedited examination one of the Patents bearing application number IN2885091 titled as “A process for the preparation of Apixaban” has been granted patent in record time of 4 months.  This is remarkable and must be noted that the patent office only took 19 days to grant the said patent if the time taken by the applicant to respond is excluded. Thus, it is evident from the above mentioned data that these timelines bring our patent office in line with global practices.[6]

[1] https://www.mondaq.com/india/patent/492800/expedited-patent-examination-in-india

[2] https://ipindia.gov.in/writereaddata/Portal/News/591_1_PPH_Procedure_Guideline_combined_20191128_final.pdf

[3] https://ssrana.in/articles/india-an-overview-of-procedure-guidelines-for-patent-prosecution-highway/

[4] https://ipindia.gov.in/writereaddata/Portal/News/591_1_PPH_Procedure_Guideline_combined_20191128_final.pdf

[5] https://ipindia.gov.in/writereaddata/Portal/Images/pdf/IP_India_Annual_Report_2019_Eng.pdf

[6] https://www.iipta.com/indian-patent-office-expedited-examination/

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