Patent prosecution is an important part of a patent application being accepted as a patent grant. While there is a demand to speed up the process to enable the technical and commercial interests of business, the necessity to ensure proper scrutiny of an application to enable proper check and balances in the interest of the overall economy and the public is also crucial. The official establishments are continuously improving their systems and procedures to enable a faster prosecution and a thorough examination procedure at once.

Global outreach for technology, results in patent applications filed in different countries or jurisdictions for a given innovation. The patent laws of different jurisdictions, though based on some common agreements like the TRIPS Agreement, have variations specific to the interests and aspirations of a given country or jurisdiction. The patent laws of the respective jurisdiction govern the prosecution outcomes in each of the jurisdictions.

Patent Prosecution Highway is an approach to fast track prosecution by co-operation between jurisdictions. A case in point is the Prosecution highway between USA and Japan. Started on a trial basis with the aim to mutually cooperate to fasten the prosecution procedure of similar applications, the success of the trial prompted the two countries to implement PPH as an integral part.

With a similar proposal on cards between the Indian Patent Office (IPO) and Japan Patent Office (JPO), some of proposed amendments to the Indian Patent Laws were seen as steps taken to harmonise the laws with the patent laws of other countries. Specific concern was also raised on taking precautions to avoid diluting the rigour of prosecution and thereby causing damage to the interests of our country.

On 4th December 2019, Indian Patent Office (IPO) and Japan Patent Office (JPO) formally announced a Bilateral Patent Prosecution Highway (PPH) pilot program. The guidelines have been published on the website of Controller General of Patents, Designs & Trade Marks.

Under the PPH, when one or more claims are determined to be patentable by office of earliest examination (OEE), the applicant may request expedited examination of the corresponding patent application claims in the office of later examination (OLE). Claims are “determined to be allowable/patentable” when the OEE examiner clearly identifies the claims to be allowable/patentable in the latest office action, even if the application is not granted for patent yet.

Though the IPO mandates the submission of foreign examination details under section 8(2) of The Patents Act 1970, PPH offers the possibility of an applicant seeking an expedited examination when a favourable acceptance is received in JPO.

While Japan allows applications in all fields under the PPH facility, India has restricted the allowable fields to Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles, and Metallurgy.

The results of the pilot program can lead to the continuation or stopping of the PPH program in the future. We have to ensure that the advantages offered by the program bear fruit in the best economic and well being interests of both the countries without hurting the business and innovation ecosystem unique to each country.

The priority of the application also plays a crucial role in deciding the eligibility to the PPH facility. While applications with priority in either of the IPO / JPO and passing through the PCT /Paris Convention route are eligible, applications with a third country priority are not eligible even if they come through the PCT /Paris Convention route. Also if the application has undergone substantial examination of at least a first examination report in the OLE, PPH facility cannot be availed.