03 Apr 2020

Expedited Examination – Making grant of patents faster in India

Indian Patent Office had come up with a special provision of the Expedited Examination” procedure for patent applications with Amendment Rules 2016 which got revised last year. The provision has allowed limited number of patent applications for examination and processing within an expedited period, which is roughly less than 12 months. Under the normal examination procedure, once a RFE (Request For Examination) gets filed, the patent application takes around from 2 to 3 years for getting examined and it was taking around 4-5 years for getting patent applications granted.

The Expedited Examination was earlier applicable only to 2 categories of applicants under the Amended Rules, 2016:

  1. Start-ups
  2. Applicants opting India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in the respective International Applications.

Thereafter, the Patent (Amendment) Rules 2019 became effective on September 17, 2019. The amended rules disclosing expediting examination have now become applicable for many more categories of persons, entities under few particular circumstances.

  1. Any applicant’s invention relating to particular sectors or categories as notified by the Central Government, then the applicant is eligible for applying for expedited examination.
  2. Expedited examination provision is also applicable for the applicants who are filing patent application under an specific arrangement between the Indian Patent office and a Foreign Patent Offi Thus, India will have particular arrangement which is similar to the Patent Prosecution Highway (PPH). Accordingly, the applicants will be required to meet the eligibility criteria set under the Indian patent office.
  3. Women, Government undertakings and Small entities can also apply for expedited examination:
    • A small entity (as defined in patent rules)
    • Female applicants, where at least one of the applicant is female, applying either singly, or jointly with other applicants as joint applicant, where all the other applicants are individuals i.e. a natural person.
    • Government entities as applicant, including:
      • A Government department as applicant;
      • An institution established by a Central, Provincial or State Act as applicant, which is owned or controlled by the Government;
      • A Government Company as applicant as defined in Section 2 of the clause 45 of the Companies Act, 2013; or
      • An institution as applicant who is wholly or substantially financed by the Government;

Form 18A has also been now amended to include the above grounds and the applicants. The amended new Form 18A also mentions about the documents that each of these categories of applicants need to submit while making the request for expedited examination at Indian patent office.

The following documents are mandatory to be submitted as evidence of eligibility for applying for expedited examination:

  • ISA number which has been issued by ISA (International Searching Authority), where India has been selected as ISA by the applicant and also a particular IPEA number issued by International Preliminary Examining where India has been opted as IPEA by the applicant.
  • For startups, the certificate of recognition as startup by DIPP, any other similar document in case of foreign start up as applicants that the applicant is a startup
  • The MSME (Micro, Small and Medium enterprises) certificate as evidence of registration for claiming the Indian applicant as small entity and similar document for claiming as evidence in case of foreign applicant.
  • Photo ID card in case of female applicants in both of the cases-Indian female applicant and foreign applicant where at least one of applicant is a female
  • Applicant is a natural person
  • Any one document where the applicant is a department of the Government in both of the cases where the applicant is Indian or foreign central department
  • Any document which suffices the evidence requirement in case of the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government in both of the cases where the applicant is Indian or foreign institution
  • Any document which suffices the evidence requirement in case of the applicant is an as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013):in both of the cases where the applicant is Indian or foreign institution
  • Any document which suffices the evidence requirement in case of the applicant is an that the applicant is an institution wholly or substantially financed by the Government in both of the cases where the applicant is Indian or foreign institution
  • Any request letter from head of the department of the head of the Central Government department which support that the application relates to a sector/technology domain which has been notified by the Central Government as per the Notification from the Central Government notification and documents as required by the Controller.
  • Declarations and documents as requested by the Controller that the applicant is eligible under processing system under which a patent application lies with in an agreement between Indian Patent Office and a foreign Patent Office:

Start-ups / Small entities to file Form 28 with other document submissions:

Start-ups/Small entities are now required to file form 28 along with Start- up certificate issued by DIPP in support of their start-up status.  Scenario of startups getting benefits of Expedited examination provision:

Around 1021 startups filed patent applications under this specific provision of expedited examination. A total of 351 startups have got patents granted under expedited examination process.  The IPO & DIPP has been taking many initiatives to make more speedily patent grant process. The facility can be availed only by the start-ups that meet stated criteria on payment of stipulated fees.

Few examples of patents granted within one year filed by Start-ups

One such example is a patent which was granted in less than 4 months.  This is really remarkable as the patent office only took 19 days if we don’t count  the days taken by the applicant.  It took less than a month by the Indian patent office.

There is another patent example for the Start-ups filed by Effectual legal services i.e. IN326370 granted for ‘System and method for detecting intrusion of perimeter using a plurality of sensors’.  In this case, the request for expedited examination was filed on 18.09.2018 and the first examination report (FER) was issued within approximately two months: 28.11.2018.  The reply to the FER was filed some time later on 28.12.2018 with further extended 1-2 hearings and further written hearing submissions. The patent was filed on 11.9.2018 and grant certificate issued on 29.11.2019.  It took around one year in getting grant from the filing date for the patent  case for the Start-up applicant.

The patent no. IN2885091 was granted titled ‘A process for the preparation of Apixaban’.  In this patent case, the request for expedited examination was filed on date i.e. 21.03.2017 and first examination report (FER) was launched with in less than two weeks i.e. on  31.03.2017.  The reply to the FER was also filed in lesser time duration i.e. on 04.05.2017 with a hearing scheduled on 23.06.2017, and further written submissions was made on 03.07.2017.  Thereafter patent grant certificate was issued on 12.07.2017. It took around 4 months from applying request of examination till grant of patent which is remarkable record of timeline.

Conclusion

The expedited examination provision for few chosen categories has been making grant faster and timeline for complete patenting procedure is making faster than timelines before. This will bring Indian patent office matching with the world IP practices. The Indian patent office has been coming up with many innovative approaches and the government is taking special initiatives for making patenting procedure faster. These provisions have given excellent results and many patents have been granted.


About the Author: Dr. Amit Goel, Director at Effectual Services  and Jyoti chauhan , Manager at Effectual Services can be reached at:   and  jyoti.chauhan@effectualservices.com 

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