Since the signing of the pilot Patent Prosecution Highway (PPH) program agreement between Japan and India in late 2018, Applicants having commercial interests in both the countries have been eagerly waiting for the program to commence. And on November 20th, 2019, the Union Cabinet also approved the proposal for the adoption of Patent Prosecution Highway program as mentioned in our previous post. Subsequently, the procedure guidelines for Patent Prosecution Highway were published by the Indian Patent Office (IPO) and the Japan Patent Office (JPO) on the 29th of November 2019. The guidelines cover the scope of the Normal PPH and the PPH-MOTTAINAI.
The PPH guidelines elaborate on the details of its implementation in both India and Japan. It lays down the general conditions of the IPO-JPO PPH; the common requirements including specific requirements for a PPH request to the IPO and JPO; the supporting documents to be submitted; procedure for the expedited examination through PPH and procedure for handling of such requests by both the offices.
The PPH pilot program between IPO and JPO commenced on November 21, 2019, and is for a period of three years. The Offices started accepting PPH requests on December 5, 2019. The number of requests for the PPH in each Office will be respectively limited to 100 cases per year.
Apart from the PPH guidelines, the IPO and JPO possess the discretion to establish their own guidelines. For instance, the IPO has established that a single Applicant would be barred from filing more than 10 PPH requests per year.[1]
Further, the guidelines enlist criteria for eligibility of an application to avail the facility of PPH. The first list of requirements in the guidelines is common to both the Indian and Japan Patent Office.
Firstly, both the Office of Later Examination (OLE) application and the Office of Earlier Examination (OEE) application shall have the same earliest date.[2] According to the guidelines, 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 are as follows:
| Office of Later Examination (OLE) | Office of Early Examination (OEE) | |
| PPH request to the IPO | IPO | JPO |
| PPH request to the JPO | JPO | IPO |
Secondly, the PPH facility can also be availed by applications belonging to a patent family of which at least the earliest application was filed either with the IPO or the JPO. In the case of a PCT application, the facility can be availed by an application only if the PCT application is filed with the IPO or the JPO as a Receiving Office (RO). For the ease of understanding, the guidelines provide simple examples of eligibility as well as ineligibility of applications in the Annexure 1 of the guidelines document.
Thirdly, at least one corresponding application shall exist in the OEE and one or more claims of the corresponding application are determined to be patentable by the OEE. The corresponding application can be an application providing priority to the OLE or an application deriving domestic priority from the OEE application or an OEE national phase application of a PCT application. It is also to be noted that claims are considered as “determined to be patentable” when the OEE examiner clearly identifies the claims to be patentable in an office action, even if the application is not granted yet.
Fourthly, all the claims on file must sufficiently correspond to the “determined to be patentable” claims of the OEE application. The claim is said to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the OLE are of similar or narrower scope as the claims in the OEE. However, any claims amended or added after the grant of the request for participation in the PPH pilot program need not sufficiently correspond to the claims indicated as allowable in the OEE application.
Further, the Applicant cannot file the PPH request for an application, once the Examiner accepts its designation in the JPO or the application is allotted to an Examiner for examination in the IPO. If the claims are not yet determined to be patentable at the JPO at the time of filing the application in the IPO, the Applicant should file the request as soon as the claims are determined to be patentable at the JPO.
The Guidelines also provides for some of the office-specific requirements, which is additional to the list of requirements mentioned above.
Firstly the IPO has specified that the applications belonging to certain technical fields can avail of this facility. Such technical fields include Electrical, Electronics, Computer Science, Information technology, Physics, Civil, Mechanical, Textiles, Automobiles, and Metallurgy.[3] Whereas, the JPO welcomes patent applications in all fields of technology.
Secondly, with regard to fees, at the IPO, the fee for filing the request for expedited examination at IPO would be about USD 575 to USD 850 [4] for a large entity.[5] However, at the JPO, there is no additional fee for filing the PPH request.
Further, the guidelines prescribe the supporting documents required in the IPO and JPO.
In the IPO, the Applicant is directed to submit the copies of all office actions from the JPO along with the copies of all the claims determined to be patentable by the JPO examiner, their translation, and self-certification of those translated documents.
In contrast, at the JPO, the Applicant does not have to submit the copies of the office actions, the claims, and the translated documents, if those documents are available at the IPO website. These documents are only required when it cannot be retrieved from the IPO website.
At both the JPO and the IPO, the Applicant is required to submit the copies of only the non-patent references cited by the IPO examiner and the JPO examiner, respectively, along with the PPH request. Moreover, at both offices, the Applicant is required to provide a table indicating the correspondence of OLE claims to the OEE “determined to be patentable” claims, when the OLE claims do not completely correspond to the OEE claims.
The guideline also includes the application forms to be filled by the Applicant for filing the PPH request at the respective offices.
Once the PPH request is filed at the IPO, the IPO must notify the Applicant in case of defect and within 30 days of receipt, the Applicant is directed to re-submit the corrected documents. The IPO on its discretion may grant or refuse the request. Once refused, the Applicant is barred from filing the PPH request again.
On the filing of the PPH request at the JPO, the Applicant is also provided with an opportunity to re-submit the corrected documents before deciding on the request. However, there is no specific time duration mentioned. Also in contrast to requests filed at the IPO, if the JPO refuses the request, the Applicant may file a renewed PPH request.
Even when the PPH request is granted, the examiners are only expected to take the grant of the claims in the other office into their due consideration. However, the examiners at the respective offices still have the right to exercise their discretion while deciding on the grant of an application.
These guidelines focus on developing a faster and efficient patent ecosystem in both countries.
[1] This limit will be reconsidered after March 31st, 2020.
[2] Therefore, the OLE application may be an application claiming priority under Paris convention from the OEE application(s) or an application providing priority under Paris convention to the OEE application or an application sharing a common priority document with the OEE application(s) or a PCT national phase application where both the IPO application and the PCT application are derived from the common PCT international application.
[3] In order to meet this requirement, it is considered as being of these technical fields the
patent applications whose main classification (first classification), according to the
International Patent Classification (IPC), is one of the IPCs listed in the guidelines.
[4] This is depending on whether the Indian application is published at the time of filing the PPH request.
[5] The IPO also offers significant discounts for applicants falling under different categories, such as individuals, small entities, and start-ups.
