Expedited examination of patent applications

Over the years the Indian Patent Office (IPO) has accumulated a huge backlog of pending patent applications. At present, the IPO is examining patent applications filed between May 2012 and July 2012 – that is, it is at least four years behind. The impact of this delay is clearly reflected in the stagnation in patent filings over the past four to five years and the large number of pending patent applications which have been abandoned by applicants. Until 2016 there was no straightforward way of expediting the examination of patent applications in India, but the patent rules have now been amended to allow this.

Under the amended rules, a request for expedited examination can be filed along with payment of the official fee, which is:

• Rs60,000 for large entities;
• Rs25,000 for small entities; and
• Rs8,000 for individuals and start-ups.

If an application has not already been published, a patent applicant must also file a request for publication along with payment of the official fee, which is:

• Rs12,500 for large entities;
• Rs6,250 for small entities; and
• Rs2,500 for individuals and start-ups.

In addition to payment of the official fees, in order to be eligible for expedited examination the patent applicant must fulfil at least one of the following conditions:

• it is a start-up; or
• it has chosen India as an international searching authority (ISA) or an international preliminary examining authority (IPEA) in a corresponding Patent Cooperation Treaty (PCT) application.   

Applicants which would have been eligible to apply for the expedited examination at the time of filing can submit the requisite documentation and the balance fee for expedited examination, which is:

• Rs40,000 for large entities;
• Rs15,000 for small entities; and
• Rs4,000 for individuals and start-ups.

Start-ups
The amended rules define a 'start-up' as a private limited company as defined in the Companies Act 2013, a partnership firm registered under Section 59 of the Partnership Act 1932 or a limited liability partnership as defined under the Limited Liability Partnership Act 2002, where:

• no more than five years have lapsed from its date of incorporation or registration;
• the turnover for any of these five financial years did not exceed Rs250 million; and
• it works towards the innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property (this activity has been clarified to be the creation or addition of value for customers or workflow).

If an entity was a start-up at the time of filing the application, but then ceases to be a start-up due to the lapse of five years from its registration or incorporation or its turnover exceeding the Rs250 million limit, it need not pay the balance fee. However, if the application filed by a start-up is transferred to another entity which is not a natural person, the transferee must pay the balance fee.

India chosen as ISA or IPEA in corresponding PCT application
Applicants who select the IPO as an ISA or an IPEA can also enjoy expedited examination. At present, only Indian and Iranian applicants can choose the IPO as an ISA or an IPEA.

The expedited examination process sets strict timelines for the IPO. For example, examiners have one to two months to prepare an examination report from the date on which a controller refers the application. The controller has one month to dispose of the examiner’s report. The controller must issue a first examination report within 15 days of disposal of the examiner’s report. An application must be put in order for grant within six months of the issuance of the first examination report, although this can be extended by three months on request. The controller must dispose of the patent application within three months of receipt of the last reply to the first examination report or the last date to put the application in order of grant, whichever is earlier.

The patent rules allow the IPO to limit the number of requests for expedited examination received during a year. Under a notice published in the Official Journal on June 14 2016, only 1,000 applications were to be accepted until December 31 2016. The IPO has yet to report the statistics for expedited examinations conducted in 2016. It will be interesting to discover how applicants have used the expedited examination process and whether the IPO was able to deliver on its intentions.