3 Ways To Fast-track Patent Application In India | HavingIP

It can take years to get a patent. Getting a patent is a complex process and involves multiple steps. Each step has its purpose and can’t be overlooked.

Like everything else, there are both pros and cons of a patent getting late. Sometimes, it becomes important for you to get your patent registered as fast as possible.

After knowing that you will get your patent only after a gap of 2-3 years, you shouldn’t get discouraged. Because there are ways that allow you to get your patent quickly. Now, the question is how? How can you get your patent fast in India or how can you fast-track the patenting process in India?

There are 3 ways you can get your patent fast in India as per Rule 24C & Rule 20 (4)(ii) of Indian Patent Rules, 2003. These are: 1) expedited examination 2) express request for examination 3) PPH (patent prosecution highway). 

Further, you may be wondering, what is the fastest possible time duration in which you can get your patent? Before we delve into the ways that allow you to get a patent quickly, let’s deal with this query first.

So, How Fast Can You Get A Patent In India?

The fastest patent you can get in India is around 7 months from the date of filing. That’s because, it includes 1 month for publication and after publication, 6 months wait time for pre-grant opposition.

Examination happens after publication and all the formalities can be concluded within those 6 months required for pre-grant opposition.

The logic behind waiting for 6 months after publication is that only after publication do people come to know about your invention.

In some cases, there may be people who may have issues with the patent application and may want to register their opposition before the patent is granted. To facilitate such people, there is a wait time of 6 months after publication for pre-grant opposition.

By going the normal route, it may take more than 2 years to get a patent in India. That’s 18 months of publication and 6 months of wait time for pre-grant.

Further, due to backlog and lack of manpower in the patent office, there may be a significant delay. We have dealt with all possible reasons in detail for you in this article.

Let’s look at the reasons first why would you want or not want to get your patent early?

Pros of expedited examination:

• Having patent boosts your investor’s confidence in you. So, you can have early access to required funds as a startup or small entity.
• With patent you can market your product claiming exclusivity.
• You can scare off infringers/ copiers and get an edge over future infringement very early.
• If commercial life of your product is small then getting patent early is essential so that you can the maximum out of it before your product/ patented technology goes out of fashion.
• You can invest more into your product if you are certain of a patent right.
• If you are a person or an institution looking to build credentials in intellectual property domain then expedited examination scheme can be of great help.

Cons of expedited examination:

• Increased government fees for expedited examination.
• The prosecution money that is normally spread over the period of 2-3 years, is needed to be spent in a small amount of time.
• In a short period of time, you have to decide whether you really want to pursue the patent application and what type of protection you want.
• Because of the short time duration, you may lose freedom to amend claims with the knowledge of new competitors.
• To enforce patent rights legally, you need to have financial muscle. You may get patent early but you may not be able to gain access to sufficient funds in the short period of time.
• If your patented technology has long commercial life then getting the patent late rather than early may be more advantageous to you. That is because:
  • Until you get a patent, others will probably copy your technology, create a market & strong consumer base for it, and scale it.
  • Copiers will also become financially strong over time and will be able to pay you damages or crack a good deal with you whenever you happen to acquire patent rights.
  • Further, you may take over all the progress made by your copier and enforce your patent rights with costly legal affairs as with time you will gain access to sufficient funds.
• The expedited examination requires your immediate attention and resources for prosecution matters.
• In case of early publication, you lose the ability to withdraw your application. Normally, you can withdraw your application within 15 months of the filing date or priority date, whichever is earlier. There may be a situation when you may further want to work upon your invention. In such a case, if your application is published then it may act as prior art for your further work.

Now, let’s look at all three possible ways by which you can get your patenting process fast-tracked. Moreover, you should know that not everyone but a few applicants belonging to notified categories can get the benefit of these ways. Lets’s dive right into it.  

1. Expedited Examination

The government of India has been amending patent rules from time to time. In this process, it has added various categories over time that are eligible for expedited examination to encourage applicants of those categories.

If you happen to be an eligible candidate, you want to fast-track your application process, you should opt for expedited examination. You can do so by filing a request for examination along with form 18A. Various aspects of this scheme are covered in the following points:

•  Expedited examination is dealt under Rules 24B & 24C of the Indian Patent Rules.
• You can file the request for expedited examination in Form 18A only by electronic means i.e. online. You can file the request within 48 months of filing or priority date, whichever is earlier.
• You have to be eligible for it to apply, we will see about it later.
• Normally, a request for examination is filed under rule 24B. You can convert it into expedited examination under rule 24C(1) with required fees & documents.
• Now, if the application is already not published, you will have to file a Form 9 for early publication along with Form 18A. Because there can be no examination without publication.
• In case, you file the request for expedited examination in Form 18A but you do not meet the requirements then your request will be treated as a normal request for examination. You will get intimation about it from Patent Office.
• After such a request, the application is referred to Examiner. The Examiner ordinarily takes one month from the date on which the application was referred to him for examination. Time taken by the Examiner cannot exceed two months.
• After the examination, the Examiner sends the report to Controller. The Controller disposes of the report within one month after he receives the report.
• From the date of disposal, within 15 days, the Controller issues the first examination report (FER) along with relevant documents, if any.
• The time for putting an application for grant under section 21 is 6 months from the date of FER. Or within these 6 months, you may reply to the FER.
• You can extend the above-mentioned period of 6 months by 3 more months. For this, you will have to apply for an extension in Form 4 before the expiry of the above-mentioned period of 6 months.
• The reply to FER is processed by the patent office in the same order the reply is received. It’s on a first-come, first serve basis.
• The controller disposes of the application within a period of 3 months from the date of receipt of the last reply to the FER or within a period of 3 months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier: Provided that this time limit shall not be applicable in case of the pre-grant opposition.
• How many applications can be examined in expedited scheme every year can be limited by the Patent Office.

Are you eligible for the Expedited Examination scheme?

The list of eligible categories of applicants keeps changing. In fact, the trend is that the government is adding new categories of applicants with each amendment to the Rules.

First, you should check whether you fall into the category of applicants who can avail expedited examination scheme. Then you should find out the required documents to prove your category.

If we look at Rule 24C of Indian Patent Rules, we find that an applicant can avail of the benefit of expedited examination on the following grounds:

(a) that the applicant has selected India as the competent International Searching Authority (ISA)/ an International Preliminary Examining Authority (IPEA) in the corresponding international (PCT) application. 

In this case, you as an applicant can use show relevant ISA number issued by ISA India or relevant IPEA number issued by IPEA India.

(b) that the applicant is a startup. 

If you are an Indian applicant then you need to show a certificate of recognition as a startup from Department for Promotion of Industry and Internal Trade (DPIIT). If you are a foreign applicant then any evidence of eligibility to the satisfaction of controller should work.

(c) that the applicant is a small entity.

If you are an Indian applicant , you need to show evidence of registration under the Micro, Small and Medium Enterprises Act, 2006. If you are a foreign applicant then any evidence of eligibility to the satisfaction of controller should work.

(d) The applicant is a female, or in case of joint applicants where all the applicants are natural persons, at least one of the applicants is a female.

As evidence, you need to show a photo identity card of the female applicant issued by competent authority. This is applicable to both Indian and foreign applicants.

(e) that the applicant is a department of the Government.

As an applicant, you need to show any evidence of eligibility as may be required by the controller.

(f) that the applicant is an institution established by a Central, Provincial, or State Act, which is owned or controlled by the Government.

As an applicant, you need to show any evidence of eligibility as may be required by the controller.

(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013).

(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013).

As an applicant, you need to show any evidence of eligibility as may be required by the controller.

(h) that the applicant is an institution wholly or substantially financed by the Government.

Explanation:- For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971).

As an applicant, you need to show any evidence of eligibility as may be required by the controller.

(i) that the application pertains to a sector that is notified by the Central Government on the basis of a request from the head of a department of the Central Government.

Provided that public comments are invited before any such notification.

As an applicant, you need to show notification from the central government and documents as may be required by the controller.

(j) that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.

As an applicant, you need to show the declarations and documents as may be required by the controller.

PPH agreement with Japan Patent Office is one such example. We will see about PPH later in this article.

Now that we have talked about the expedited request for examination, we should also talk about numbering system that is followed in queue of requests for examination.

Format for a normal request for examination is RYYYYJNNNNNN,

• Where “R” denotes Request for examination u/r 24B(1)(i)
• “YYYY” denotes four digits fixed length “Year of filing of request” 
•  “J” denotes Jurisdiction for Patent Application against which Request of Examination has been filed
•  “NNNNNN” denotes 6 digits fixed length common continuous running serial number applicable for all Patent Offices in India

Format for an expedited request for examination is EYYYYJNNNNNN 

• Where “E denotes Request for Expedited Examination under rule 24 (C)
• The remaining “YYYYJNNNNNN” is the same as the normal request as explained above 

2. Express Request

This scheme is for PCT applications. In India, PCT applications are taken up only after the lapse of 31 months from the priority date. 

However, if you want any processing to start before 31 months then you can file an express request for examination. It is clear that you will have to file it before the expiry of 31 months to take the benefit of such a request. 

The express request is filed in Form 18 under Rule 20 (4)(ii).    

Now, if you happen to be eligible for expedited examination for your PCT application, you can do so by filing a Form 18A under Rule 24C(1).

There are two scenarios involving expedited examination of PCT application: Before 31 months and after 31 months. 

1. If you want your application examined under the expedited scheme before 31 months then you will have to file both:
   • Form 18 under Rule 20 (4)(ii) – So that the application can be considered before 31 months for processing; 
   • Form 18A under Rule 24C(1) – So that application can be examined under the expedited scheme.

2. If you want your application examined under expedited scheme after 31 months then you have to file only Form 18A under Rule 24C(1). 

Difference between request for expedited examination and request for express request:

1. When it comes to national phase of PCT applications, anyone can file express request for examination but only eligible applicants can file request for expedited examination.

2. In express request, queue of requests for examination isn’t jumped. In expedited request for examination, queue of requests for examination is jumped.  

3. Patent Prosecution Highway (PPH)

This is the latest scheme through which you can get your patent application fast-tracked in India. However, this concept of a work-sharing mechanism between two offices is still in its early stage in India.

As you are aware that patent is a territorial right. Therefore, for the same invention, the patent application has to be filed in multiple countries for protection.

Further, the step of ascertaining novelty, inventive step & industrial applicability is almost similar everywhere. This way the patent application has to go through similar steps in every country. The PPH mechanism aims to address this issue and increase efficiency. 

If two countries have PPH mechanism between them then one country can re-use the work done by another country for the same application. For example, if at least one claim is allowable in one country then, you can ask for fast-tracking of that claim in another country.

Indian Patent Office (IPO) and Japan Patent Office (JPO) have started a “PPH Pilot Program”. It consists of ‘Normal PPH’ and ‘PPH-MOTTAINAI’. It commenced on November 21, 2019, for a period of three (3) years. Offices started accepting PPH requests on December 5, 2019. For the purpose of the pilot program, PPH requests that each office can receive are limited to 100. 

Note: "MOTTAINAI" is a Japanese word. It means "to feel sorry that something still usable is wasted or something valuable is  not properly used" 

How many PPH requests can one applicant file per year is to be decided by offices by consulting each other. Initially, this number by IPO has been capped at 10 PPH requests by the applicant alone or jointly.

To understand the mechanism of PPH pilot agreement you should know the concept of OEE and OLE as shown in the table below. As per this agreement, PPH request is filed with OLE and OEE determines the patentability/ allowability of claims of an application before the OLE.

	Office of Later Examination (OLE)	Office of Early Examination (OEE)
PPH request to the IPO	IPO	JPO
PPH request to the JPO	JPO	IPO

You may be wanting to know what is an allowable or patentable claim for the purpose of this PPH Pilot Program.

To answer this, “a claim determined as novel, inventive, and industrially applicable by the office of earlier examination (OEE) is an allowable or patentable claim for the purpose of this pilot program.”

What are the requirements to file PPH request to the IPO (Indian Patent Office)?

1. IPO accepts applications belonging to technical fields of Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles, and Metallurgy for this pilot program.

For this purpose, the main or first classification (International Patent Classification, IPC) of a patent application is used. However, if it is found during search and examination that the application belongs to allowed IPCs but doesn’t actually belong to listed technical fields then IPO may treat that application as a non-PPH application. In such a case, IPO will give the reason to do so although the decision of IPO will be final. 

2. PPH requests for expedited examination are filed under Rule 24C(1)(j) of the Patent Rules, 2003.

3. As we have seen previously that for examination including expedited examination under PPH Pilot Program, the application should be published first. Therefore, you should file a request for early publication if the application is already not published or if no request for early publication has already been filed.

4. Request for expedited examination is filed in Form 18A within 48 months of priority date or filing date whichever is earlier.

5. Request for expedited examination in Form 18A can only be filed by electronic means i.e. “online”.

6. Prescribed fees can be found in the First Schedule of the Patent Rules, 2003 under item no. 14A or 14B as applicable.

7. To file a request for expedited examination under PPH Pilot Program to the IPO, you have to fill out the form “Information for PPH request to the IPO (IPO as OLE, JPO as OEE)” as shown below.

What are the documents required for PPH request to IPO?

1. Copies of all relevant office actions by the office of earlier examination (OEE) pertaining to application, English translation of them along with self-certification as shown below.
2. Copies of all claims determined to be patentable/ allowable by the OEE and English translation of them along with self-certification.
3. Copies of references cited by the OEE examiner.
4. Claim correspondence table in the prescribed Form in 5.1 of chapter 5 of Procedure Guidelines For Patent Prosecution Highway (PPH)

Note: Under PPH Pilot Program, IPO will notify you of the defects in the request filed for expedited examination in PPH program. Within 30 days, you will have to correct the defects. If IPO still finds that the defects are not corrected then your application will not be assigned special status for expedited examination under PPH. Further, you cannot request the PPH again.

Conclusion

In this article, we have discussed everything you need to know about fast-tracking your patent application. Expedited examination boosts confidence of inventors and helps in development of patent ecosystem in emerging countries like India. Keeping the same in mind, the government of India has expanded the list of applicants who can avail of the scheme of expedited examinations over a period of time.

After having gone through this article, you may also want to look at the reasons why patent grant takes so long. How does this delay impact your prospects as a patent owner? In this regard, we have curated this great piece of information for you to check out.