Patent Prosecution Highway (PPH) pilot program between Japan Patent Office and Indian Patent Office

A Bilateral Patent Prosecution Highway (PPH) pilot program has commenced between the Indian Patent Office (IPO) and the Japan Patent Office (JPO).The guidelines in this regard have been published on the website of Controller General of Patents, Designs & Trade Marks.

The said guidelines are issued to address the procedures and requirements that applicants need to take to request expedited examination. Applicants can request expedited examination by a prescribed procedure including submission of relevant documents with the Office of Later Examination (OLE) and satisfy the requirements described in these guidelines under the PPH pilot program between IPO and JPO based on the application which is determined to be patentable by the Office of Earlier Examination (OEE).When filing a request for the PPH pilot program, an applicant must submit information in the prescribed Form presented in Chapter 5 of these guidelines to the OLE. Following points are to be noted while submitting a request to IPO under the said PPH program:

1. The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.
2. 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.
3. Request for assigning special status for expedited examination under the PPH is required to be filed online with prescribed form 5-1 under chapter 5 of the PPH guidelines.
4. An applicant/authorized agent can file the request for expedited examination Form 18A only after the request for assigning special status filed in accordance with the provisions of chapter 5 is accepted by IPO. The decision on Acceptance/Rejection/Defect notice shall be communicated to the applicant/authorized agent through email as well as message on e-filing portal.
5. In case of defects in form 5-1 the applicant will be provided opportunity to rectify the defects within 30 days from the issuance of notification of defects by IPO.
6. Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be prescribed under the Patents Act, 2003.

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