A bilateral patent prosecution highway (PPH) pilot program has been implemented between the Indian patent office (IPO) and the Japan Patent Office (JPO) on December 05, 2019, for a period of three years. The guideline was framed by the patent offices and published on the website of Controller General of Patents, Designs & Trade Marks. As per the guideline, the number of requests for the PPH was limited to 100 per year for each patent office.

Second Year Pilot Program of PPH

After successful completion of the first-year patent prosecution highway pilot program, the Indian patent office has recently notified the commencement of the second-year patent prosecution highway pilot program on its official website to file a PPH request. As per the notification, the Indian patent office will start accepting Form 5-1 (Information for Participation in the Patent Prosecution Highway) under Chapter 5 of the PPH Guidelines from December 7^th,2020, and has a limited the number of request to 100 for this year as per the Procedures Guidelines for the Patent Prosecution Highway.

^{[Image Source: Shutterstock]}

Points to be considered for filing a PPH request

The notification of the Indian Patent Office has listed the following points to be considered while filing a PPH request under the second-year PPH pilot program:

• As per the Procedures Guidelines for the Patent Prosecution Highway to file a PPH request with the Indian Patent Office (IPO), the number of the PPH requests will be limited to 100 cases per year on a first come first serve basis.

• The Indian Patent Office will allow up to10 PPH requests per year for an applicant, who has filed a patent application, either alone or jointly with any other applicant.

• The PPH request for the expedited examination of the patent application under the PPH pilot program to the IPO is required to be filed in prescribed form 5-1 under chapter 5 of the PPH guidelines.

• The request for expedited examination on Form 18Acan be filed by an applicant or authorized agent only after the PPH request filed on form 5-1, prescribed in chapter 5 of the PPH guidelines, is accepted by Indian Patent Office. The decision on acceptance or rejection or defect will be communicated to the applicant/authorized agent via registered email id and message on the e-filing portal.

• The Indian Patent Office will issue a notification of defects in case IPO identifies defects in form 5-1, the applicant will be provided with an opportunity to rectify the identified defects within 30 days from the issue of notification of defects by IPO.

• The request for expedited examination in Form-18A has to be filed as prescribed under the Patents Rules, 2003 notwithstanding the above procedures.

Conclusion

Therefore, it is highly pertinent to file the PPH request as soon as the Indian Patent Office starts accepting the second-year PPH requests i.e. December 7^th, 2020. In addition, the Procedures Guidelines for the Patent Prosecution Highway to file a PPH request with the Indian Patent Office can be accessed by clicking here.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.