Expedited Examination of Patent Applications in India

My first encounter with First Examination Reports (FER) issued by Indian Patent Office (IPO) happened during my internship in 2014 where i observed patent applications roughly took 4-5 years to get examined and another 1-2 years to get a grant post examination. Considering the limited period (20 years) for which patent rights are granted, prosecution time of 5-7 years was quite unusually high. Things improvised and became much swift after IPO appointed more patent examiners. Still the average time taken by a patent application to proceed towards grant was high. For the individual inventor-applicants, the problems faced were altogether on different level. They essentially lost interest in getting patent for their invention due to long duration of prosecution and costs involved thereof.

Another measure to address the issue was taken and The Patent Rules were amended in 2016 to introduce the provision of expedited examination for an applicant who is either a start up or the applicant who has indicated India as a competent ISA (International Searching Authority) or IPEA (International Preliminary Examining Authority)

Later, the draft Patents (Amendment) Rules, 2018 were introduced which further expanded category of applicant who can avail the expedited examination option. After considering the comments from stakeholders, the Patents (Amendment) Rules, 2019 were published on September 17, 2019. 


Form 18A has been amended accordingly and now it covers all the categories of applicant mentioned in rule 24(C). The applicant can select any of these as to avail expedited examination. The Documents to be mandatorily submitted as evidence of eligibility for availing expedited examination on the grounds along with category of applicants is mentioned as below:


1. that India has been indicated as the competent International Searching Authority in the corresponding international application:

- Relevant ISA number issued by ISA, India.

that India has been elected as an International Preliminary Examining Authority to the corresponding international:

- Relevant IPEA number issued by IPEA, India;



2. That the Applicant is a Startup: 

 - For an Indian applicant: The certificate of recognition as a startup from Department for Promotion of Industry and Internal Trade.

 - In case of a foreign entity: Any document as evidence of eligibility;



3. that the applicant is a small entity:

 - For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006).

 - In case of a foreign entity: Any document as evidence of eligibility;



4. that the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then applicant or at least one of the applicants is a female:

 - In case of Indian applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility.

 - In case of a foreign applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility;



5. Where the applicant is a department of the Government:

 - In case of Indian applicant: Any document as evidence of eligibility.

 - In case of a foreign applicant: Any document as evidence of eligibility;



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

 - In case of Indian applicant: Any document as evidence of eligibility.

 - In case of a foreign applicant: Any document as evidence of eligibility;



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

 - In case of Indian applicant: Any document as evidence of eligibility.

 - In case of a foreign applicant: Any document as evidence of eligibility;



8. that the applicant is an institution wholly or substantially financed by the Government:

 - In case of Indian applicant: Any document as evidence of eligibility.

 - In case of a foreign applicant: Any document as evidence of eligibility;



9. that the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of a department of the Central Government:

 - Notification from the Central Government and documents as maybe required by the Controller.;


10. 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:

 - Declarations and documents as maybe required by the Controller.


Conclusion:

The expedited examination provision has made the process of grant of patent swift for the mentioned category of applicants and it has indeed benefited them in several ways. viz., it becomes far more easier to attract funding for a start up if patent has been granted in its name. Benefits flow both ways in this case. Investments matter and patents make sure the return on investments. 
I remember the much discussed news of a expedited patent grant to a start up in less than four months from the date of application. This provision has indeed brought a significant change in the history of Patent law in India and may it benefits to those who need it the most!

HAPPY WORLD IP DAY..!

Cheers..!

~until next time~