Fast-tracking Patent Grant in India: Pros and Cons
Patent is a right granted to the owner of the invention to use, manufacture and sell his intellectual asset. This right is conferred on the condition that the invention must meet all patentability requirements – novelty, non-obviousness, industrial application – as stipulated by law. Patent rights are limited to 20 years from the date of filing of the patent application. The patent is granted with the seal from the Indian Patent Office (IPO) and is notified in the journal. However, this entire process can be time-consuming and the grant of a patent can take years. The following article sheds light on fast-tracking patent grants in India and the benefits and drawbacks associated with various types of examination requests. But first, let’s take a look at the Indian patent process.
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Patent Grant Process in India – an Overview
Patent applications may take a considerable amount of time to be examined and approved under appropriate circumstances. In India, patent grant usually takes 3-6 years from the date of application filing. Once a patent application is submitted, it is published after the expiry of 18 months from the filing date or priority date, whichever is earlier.
Generally, a request for examination should be filed with the IPO within 48 months from the date of the earliest priority application. Otherwise, the patent application gets abandoned. After filing an examination request, the Indian Patent Office examines the patent application. The examination is conducted in the order in which such requests were filed. Hence, the whole process of patent grants is time-consuming and may be further delayed in case of any objection(s) raised by the Patent Office.
It is well worth noting that the term of the patent is limited to 20 years from the filing date of the patent application in India or the international filing date. This is regardless of whether there is any delay in patent prosecution process, which significantly shortens the term of the patent and makes the applicant suffer huge losses. In order to keep up with the global standard time for granting a patent, the Patent laws in India have been amended over the past few years and accordingly the overall patent system in the country is constantly evolving. The proposed amendments were aimed at fast-tracking the process of granting patents.
Expediting Patent Grants – Patents (Amendment) Rules, 2016
Heralded as a breakthrough in the fight against the slow-moving process of patent grants, the Indian government brought into force, Patents (Amendment) Rules, 2016. The previous laid-down provisions of these rules allowed an applicant to file a request for expedited examination of the patent application under Rule 24C of the Patent Rules, 2003 only if:
- The applicant fell under the category of a start-up (i.e., an entity, incorporated and registered as a start-up in India).
- An application had indicated India as the competent International Searching Authority (ISA) or it was elected as an International Preliminary Examination Authority (IPEA) in the corresponding international application.
Subsequently, Patents (Amendment) Rules, 2019 incorporated many more categories of persons, entities that can request for expedited examination under Rule 24C. Recently, Patent (Amendment) Rules, 2021 inserted Rule 24C(k), to allow “eligible educational institution” for filing a request for expedited examination. It can be filed by submitting Form 18A (introduced in the Patents (Amendment) Rules, 2016). Such request shall be made only by electronic filing within 48 months from the date of priority or date of filing, whichever is earlier.
Pros and Cons of Different Types of Examination Requests in India
1. An Ordinary Request for Examination of Patent Application in India
The request for ordinary examination of patent applications may be filed within 48 months from the earliest priority application date. The patent application undergoing the ordinary examination may take 3-6 years to receive a grant from the date of application. The ordinary request for examination can be filed by submitting Form 18 under Rule 24B(1)(i) along with a prescribed fee. Additionally, if an ordinary request for examination has been filed under Rule 24B by an eligible candidate, then such a request can be converted to the expedited request for examination under Rule 24C. This can be done using Form 18A by submitting the requisite document and paying the relevant official fee.
Pros of the Ordinary Request for Examination:
- Economical and inexpensive for the applicant(s)
- The applicant has 48 months from the priority date to file the ordinary request
Cons of the Ordinary Request for Examination:
- Lengthy process
- Takes more than 1 year from the filing date of the ordinary request for such applications to get examined. The same holds true for generating the first examination report because ordinary queue is assigned on such requests.
- Takes more than 3-6 years for patent grant
- Poses the risk of invention becoming obsolete due to slow-moving process
- Causes huge loss to the applicant and inventors
2. An Express Request for Examination of Patent Application in India
In case of the national application phase of Patent Corporation Treaty (PCT), an express request for examination, along with a prescribed fee in accordance with Article 20 (4) (ii) of the Patent Rules, 2003 (as amended), can be filed before the expiration of 31 months from the priority date. Once the express request for examination is filed, the Examiner should prepare the first examination report within one month, without exceeding three months. The express request for examination can be filed by submitting Form 18 under Rule 20(4)(ii).
Pros of the Express Request for Examination:
- Applicant receives the first examination report within 1-3 months of filing an express request
- Applicant may receive the grant within 2-3 years
Cons of the Express Request for Examination:
- Slightly expensive in comparison to the ordinary requests
- Can only be filed in case of the PCT national phase application
- Applicant has only 31 months from the priority date to file the express request
- Patent Office fails to strictly abide by the prescribed timelines for examination
3. An Expedited Request for Examination of Patent Application in India
Rule 24C of the Patent Rules, 2003 governs the expedited request for examination. The request for this must be filed by submitting Form 18A within 48 months from the priority date/application date of the patent application, whichever is earlier. It is pertinent to note that a request for expedited examination shall be accompanied by a request for early publication (i.e., Form 9) under rule 24A of the Patent Rules, 2003, except where an application has been published or a request for publication has already been filed.
The examiner must examine the patent application and submit the first examination report within one month, but not exceeding two months. Similarly, the first examination report, if required, is to be issued within fifteen days from the date of disposal of the report by the Controller. A reply to the first examination report is to be filed by the applicant within 6 months from the date of the examination report or within an extended period of 3 months. Further, the Controller is required to dispose-off the application of expedited examination within 3 months from the date of receipt of the last response to the first examination report. Or, it must be done within 3 months from the last date to put the application in order for grant under Section 21 of the Patents Act, 1970.
The applications having expedited requests for examination are assigned to a prioritized queue, which is different from the ordinary queue. Therefore, the patent applications for which the expedited requests are filed will be assigned to examiners for examination much earlier than the patent applications that have been in the ordinary queue.
Pros of the Expedited Request for Examination:
- Applicant receives the first examination report within 1-2 months of filing an expedited request
- The IPO fast tracks the examination because the prioritized queue is assigned on such requests
- Applicant may receive the grant within 1 to 1.5 years
Cons of the Expedited Request for Examination:
- It is expensive in comparison to other examination requests
- A limited number of expedited examination requests are accepted by the IPO every year
- Provision of filing an expedited examination request is available to a certain category of applicants
- It is mandatory to submit additional documents as evidence of eligibility for filing such requests, which adds additional burden on the applicant
Eligibility for Expedited Examination
According to the Patent Rules, 2003 (as amended), an applicant can apply for expedited examination if:
- “The applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.”
- “The applicant is a start-up as defined in rule 2(fb) of the Patent Rules, 2003.”
- “The applicant is a female natural person or in case of joint-applicants where all the applicants are natural person at least one of the applicants is female.”
- “The applicant is a government undertaking in accordance with section 2(1) (h) of the Patent Act, 1970 in case of an Indian applicant, or is a similar entity in case of a foreign applicant.”
- “The applicant is an institution wholly or substantially financed by the Government.”
- “The applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian patent office with another participating patent office.”
- “The applicant is eligible educational institution (Patents (Amendment) Rules, 2021).”
Fee Structure Requesting Patent Examination in India
|Type of Examination Requests||Form||Natural person(s) or Start-up(s) or Small entit(y)/(ies) [INR]||Other(s) [INR]|
|Ordinary Request for examination||Form 18||4000||20000|
|Express Request for examination||Form 18||5600||28000|
|Expedited Request for Examination||Form 18A||8000||60000|
|Converting Ordinary Request to Expedited Request||Form 18A||4000||40000|
Table: The prescribed fee for e-filing of examination request in India
The expedited request for examination prioritizes the entire patent prosecution. Such provisions enable the Indian Patent Office to cope up with the world’s intellectual property practices. Additionally, the expedited patent grants protect the invention from becoming obsolete and redundant. Further, these provisions are likely to yield good results by helping several applicants obtain patents.
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-Dhruv Kaushik, Richa Chaudhary (Intellectual Property Prosecution) and the Editorial Team