On 20 November 2019, the Government of India approved the proposal of the Indian Patent Office (IPO) to adopt the Patent Prosecution Highway (PPH) programmes with participating patent offices of the other countries.
This has resulted in the commencement of the first PPH pilot programme between Japan Patent Office (JPO) and Indian Patent Office (IPO) for an initial period of three years from 21 November 2019. With this arrangement, expedited prosecution under PPH would be allowed in India based on an allowed/granted corresponding Japanese application; or vice-versa, in Japan based on an allowed/granted corresponding India application.
Under this pilot programme, JPO and IPO have started accepting PPH requests from 05 December 2019. The number of requests for PPH is limited to 100 cases per year for each office. An applicant, either alone or as a joint applicant, would only be allowed to file no more than 10 PPH requests per year. Since the commencement of the PPH programme, the IPO has received 100 cases, wherein 56 requests were accepted by the IPO. The IPO has recently announced that they will start accepting PPH requests from 09 March 2020, but has limited the number of requests to 44.
Requesting PPH in Indian Patent Office
Under this Pilot programme, the IPO will only receive patent applications in the technical fields of Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy. This can be further specified by the International Patent Classification (IPC) codes, which are detailed in the table on page 8 and 9 of the official procedure guidelines.
Requirements when submitting a PPH request to the IPO are summarised below:
- Copies of all relevant office actions of corresponding Japanese application, English translations of the office actions and a verification of English translation;
- Copies of the allowed/granted claims of the corresponding Japanese application, English translations of the allowed/granted claims and a verification of English translation;
- Copies of the references cited by the Japanese examiner. If the non-patent references are not in English, English translations of the non-patent references and a verification of English translation are required;
- Claim correspondence table.
Further details can be found in the official procedure guidelines for the PPH pilot programme, which can be downloaded from the India patent office (link provided here).