PATENT PROSECUTION HIGHWAY: THE OTHER SIDE OF THE COIN

Source : Best Lawyers

This Article has been authored by Harsh Pati Tripathi, a second year law student at NALSAR, Hyderabad.

Introduction

The average time taken for the approval of a patent request is about 30 months. This not only poses concerns regarding economic value of the invention decreasing due to delay, but also highlights the load of examinations that are required to be conducted by the patent office. With the advent of technology, it can only be assumed that there will be a rise in the number of patent filings, adding to the existing corpus of examinations. Patent Prosecution Highway (PPH) comprises a series of initiatives that is intended for the expedited approval of patents between countries that sign an understanding to facilitate the same. While the PPH program has proven to be an effective initiative in the domain of patent protection, there are downsides to the same that have not been substantially discussed. This article briefly elucidates the evolution of the program, and intends to underscore the issues with it that have been veiled by the conspicuous advantages of the PPH program.

Evolution

The inception of the ‘Patent Prosecution Highway’ goes back to 2006, when the United States Patent and Trademark Office (USPTO) signed the understanding with the Japan Patent Office (JPO). Consequently, the program became functional in 2009. As per the procedural mandates of the program, there is an agreement between the patent offices of both the countries that in instances of approval being granted to an invention or even an aspect of an invention by the patent office of one country, an expedited examination can be requested in the patent office of the other country, signatory to the program. Conventionally, the patent office of the initial country is termed as Office of First filing (OFF) or Office of Earlier Examination (OEE) and that of the subsequent filing is known as Office of Second Filing (OSF) or Office of Later Examination (OLE).

In India, the first PPH program commenced between the Indian Patent Office (IPO) and the Japan Patent Office (JPO) in December 2019, with a view to expedite patent prosecutions especially those related to the domain of technology, and also encourage foreign applications in the country. The Patent (Amendment) Rules, 2019 contains rules that promote expedited review of patent applications in certain cases. However, there was no mechanism under which such requests could be entertained. With the commencement of the PPH program, expedited review of patent applications can done where, the Office of Second Filing relies upon the work already done on the application by the patent office of the first country, building upon the preliminary work already done by the OFF. In spite of these manifest concessions provided under PPH improving efficiency of the entire exercise, there are certain shortcomings that challenge the viability of the program and stand unaddressed.

Differential treatment

With respect to the country whose brainchild is the PPH program, the USPTO does not make all applicants eligible for the program. There are numerous requirements for the same, barring applications where substantive examination (an examination of the merits of the invention) has already been initiated. Further, there are differences in the participatory requirements imposed by USPTO for different countries entering the PPH program. For instance, USPTO submits the copies of references while submitting their documents of patent filings to Japan, but the same is not followed in its transactions with the UK Patent Office. Instead, USPTO submits search and examination reports to UK. Similarly, different countries mandate different requirements for availing the benefits of the program. Canada mandates the PPH applications to be made public, South Korea does not impose the restriction on applications where substantiveexamination has started. Such varying norms increases the complexity of the exercise and inadvertently emphasizes the primacy of local laws that prevail to be significant even while carrying out international agreements.

Country Specific Laws or Stumbling Blocks?

The local patent laws of a country stand contradictory to the PPH program in opaque ways. Firstly, the claims being reviewed in an expedited manner in the Office of Second Filing get limited to the claims preliminarily approved by the Office of First Filing. This substantially restrains examination in cases where the applicant intends to submit a broader set of claims. Patent approval is territorial in nature and largely depends on the laws of the respective jurisdiction where it is being sought. Thus, the local patent laws of the first country decide the ambit of claims that are eligible for an expedited review in the second country.

Secondly, the patent law regime of India is very strict and has garnered praises from all over the globe. The Patents Act, 1970 is arguably a one-of-a-kind legislation that imposes strict criteria for patent approvals, serving a model for many developing jurisdictions. With the PPH program in place, India risks dilution of this regime by harmonizing the patent approval criteria with that of Japan, where the Patent laws do not entail such strict standards. This is applicable to most other PPH program commencements that India might announce with other countries in future.

Lastly, there is a certain sense of redundancy in the PPH program. Most jurisdictions have some form of legal recourse by which applicants can request expedited review of their claims, if the case in question demands the same. For instance, the PACE program in the European Patent Office mandates strict deadlines in which the office needs to complete the review process for applications in select cases. Canadian law contains a ‘Special Order Request’ provisionwhere applicants have the right to request expedited examinations. In UK, Section 17.05.1 of the ‘Manual of Patent Practice’ provides similar concessions to applicants, subject to the submission of appropriate reasons before the Patent Office. Thus, it is imperative to contemplate the need for adopting a costly approach like PPH, when local laws already provide a similar mechanism sans parties incurring heavy costs.

Conclusion

There are manifest advantages of the PPH program, but turning a blind eye to prospective disadvantages of the program can prove to be detrimental to the patent regime of India. As of now, pharmaceutical patent applications are not eligible for expedited review in the PPH program between India and Japan. However, if in the future such inclusions are made with respect to Japan, or any country that signs a PPH program with India, the same will evolve into a perturbing aspect of this efficiency-oriented scheme. It is not unnoticed that the program leads to quicker examination of patent claims and might also act as an impetus for inflow of foreign patent registrations in India. However, there is a possibility that it might lead to the dilution of the strict patent regime that India is proud of, and is modelled by various developing nations. Currently, the Patent Act of India does not have a specific provision to execute expedited reviews of patent claims (in spite of the existence of rules promoting speedy reviews). However, it is exigent to deliberate whether the answer to the same is a reform in the patent legislation, or recourse to a costly choice like the Patent Prosecution Highway.