Recently, USPTO announced changes and implementation of its pilot programme of Patent Prosecution Highway. Before moving onto the discussion in detail, first let us see what creature is this ‘Patent Prosecution Highway (PPH)’.
PPH is a kind of a reciprocal arrangement among a group of IP Offices (PPH Partners) to expedite the examination process and lower the costs involved therein. Under this programme, an applicant receiving a ruling from the Office of First Filing (OFF) in respect of patentability of atleast one claim in its patent application, can request the other offices (of course the PPH Partner Offices), where he is also prosecuting the same/similar application claiming priority from the application at OFF, to fast track the examination of corresponding claims in corresponding applications filed therein. The PPH leverage fast-track examination procedures already available to allow applicants to obtain patents faster and more efficiently. For example, the requested Patent Office can use the OFF’s work products – such as allowances or search reports – to streamline patent processing. One criteria, however, for availing this benefit is that all claims in the subsequently prosecuted patent application must sufficiently correspond to the allowed claims in the OFF application.
Such system is beneficial not only for the Applicants, but also saves time, cost and resources of the Patent Office to act in most-efficient manner.
Presently there are 14 PPH Partners - Australia (IPAU), Austrian Patent Office (APO), Canada (CIPO), Denmark (DKPTO), European Patent Office (EPO), Finland (NBPR), Germany (DPMA), Hungary (HPO), Japan (JPO), Korea (KIPO), Russia (ROSPATENT), Singapore (IPOS), Spanish Patent and Trademark Office (SPTO), United Kingdom (UKIPO) and Unites States (USPTO).
There is one self-evident drawback in this otherwise efficient system, which is that the eligibility to reuse the search and examination results from a partner office is limited to the Office of First Filing (OFF) i.e., priority, application in a patent family. The pilot programme intends to overcome this problem. Under the enhanced PPH framework, participation may be requested on the basis of results available on any patent family member from any office participating in this pilot, regardless of whether it was the office where the priority application was filed. Apart from this, the new framework has also touched upon some finer aspects such as including a new definition of claim correspondence, which will make the system more flexible and user-friendly without compromising efficiency or quality. The pilot programme of PPH, the trial of which is set to commence from July 15, 2011, will be in force initially for a period of one year ending on July 14, 2012 (but which may be extended or terminated earlier depending on volume of activity and other factors).
This, to me, looks like another step heading towards reaching a stage of so called ‘World-Patent’ where there will be a common platform for grant of patent (similar to what the present system of PCT – being a common platform for filing of patent application), which will be valid throughout the world.
Let’s now come to the practice at Indian Patent Office, which is still, by far, a way behind many of the Patent Offices, especially PPH Partners (not intended to demean the Indian Patent Office, in which I have immense faith and respect, but only to make a relative mark in hope for much needed improvisations and betterment). Such a mechanism to expedite the examination is much needed at the backlog ridden Indian Patent Office, which can certainly approve/consider the expedited/default grant of claims in India while relying on the grants of same/similar claims in corresponding patent applications at certain reliable Offices, such as EPO and USPTO (even though there is no reciprocal arrangement with these Patent Offices).
Strangely, we do have the enabling provisions to support this structure. Let’s first read out the relevant provisions viz. section 8 of the Patents Act, 1970 and rule 12 of the Patents Rules, 2006:
Patents Act, 1970, Section 8. Information and undertaking regarding foreign applications
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow – (a) a statement setting out the detailed particulars of such application; and
(b) an undertaking that, upto the date of grant of Patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.
Patents Rules, 2006, Rule 12. Statement and undertaking regarding foreign applications:
(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3.
(1A) The period within which the applicant shall file the statement and undertaking under sub-section (1) of section 8 shall be six months from the date of filing the application.
Explanation : For the purpose of this rule, the period of six months in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.
(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be six months from the date of such filing.
(3) When so required by the Controller under sub-section (2) section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller.
It is to be noted that there are two types of information which are discussed in these provisions – (i) information pertaining to ‘detailed particulars of such application’, which is to be mandatorily provided by the Applicant to the Controller within a period of six months from filing/availability. Since the phrase detailed particulars of such application is not described, the heads of the details could be inferred from the Form 3 as:
Name of the Country; Date of Application; Application No.; Status of Application; Date of Publication and Date of Grant.
These are merely factual details which are to be provided in the tabulated form.
(ii) Second type of information to be provided is the information relating to the processing of the application, which is to be provided only when requested by the Controller. This type of information could include information relating to objections, if any, in respect of novelty and patentability of the invention, claims of the application allowed etc. The Applicant is not required to furnish such details suo moto.
Apparently, the idea behind this is that the Applicant will inform the Patent Office, as soon as there is any development on the prosecution front of the Application in other countries, information being limited to the basic details such as dates of application, publication and grant only. The Applicant is also required to provide the updated ‘Status of the Application’. This, however, is a bit ambiguous and unclear as to the meaning of the term and the details sought thereunder. For one, the status of an application from the date of application to the date of grant could be ‘Application pending grant of Patent’. For other, the application status changes several times while during prosecution itself of the application and could be identified as ‘’First Examination report issued’ or ‘Non-final rejection’ etc. as and when it is also updated online/status records. Also, it is not clear whether the Applicant is obliged to inform the Indian patent office that the patent application has been rejected in the other country. And if not, the Controller will never get the Opportunity to ask the objections and/or grounds of rejection.
It is also possible that the Examiners dig out the information from the data available online or have collaboration with other patent offices (atleast I am not aware of any such thing yet) to provide the information. But the effect of any such information on the Examination, whether positive in case of grant or negative in case of rejection is yet unregistered (except the ISR, Written Opinion of ISA and the Chapter 2 IPRP data which is notably considered by the Examiners). And since the Applicant or the public in general is not privy to the communication between Examiner and Controller, it is difficult to make a conclusive finding on this.
We, as a practitioner before the Patent Office, however, can rely on the grants in other countries during the hearings before the Examiner and fortunately the Examiners do pay attention and possibly some consideration to this. But again this is very subjective and without any directive guidelines. To enhance the efficacy of the system while also being favourable to the Applicants, IPO can handpick certain reliable patent Offices and ask the Applicants to inform if the same/similar claims have been granted in those jurisdictions to expedite their grant in India. On the contrary, Examiners here are found to be very proactive in citing the objections cited in the ISR or otherwise with an inherent tendency at the back of their mind to ‘reject a patent application’ rather than to ‘grant a patent application’. Although it may not be bad to rely on the objections, but the practice to rely on grant for same/similar claims in other countries should also be proactively inculcated into the system.
