FACULTY OF LAW, JAMIA MILLIA ISLAMIA

(CENTRAL UNIVERSITY), NEW DELHI

INTELLECTUAL PROPERTY RIGHTS - II

PROJECT SUBMISSION

“CRITICAL ANALYSIS OF THE PATENT

PROSECUTION HIGHWAY (PPH) SYSTEM”

SUBMITTED BY: ANJITHA SANTHOSH

ENROLLMENT NO: 20183263

BATCH: 2018 – 2023 SEMESTER IX | REGULAR

NOVEMBER 2022

UNDER THE GUIDANCE OF PROF. DOLLY MADHORIYA

ACKNOWLEDGEMENT

I would like to express our special thanks and gratitude to Prof. Dolly Madhoriya ma’am who
gave me the golden opportunity to do this assignment of IPR II on the topic “Critical Analysis
of the Patent Prosecution Highway (PPH) system”. I am extremely grateful to ma’am for her
valuable guidance, keen interest and encouragement at various stages. I would also like to thank
my parents for their continuous love and support throughout the preparation of this assignment.
 INDEX

I. INTRODUCTION

a) INTRODUCTION TO THE AREA OF STUDY

b) RESEARCH METHODOLOGY

c) RESEARCH PROBLEM

d) RESEARCH OBJECTIVES

II. PATENT PROSECUTION HIGHWAY

III. TYPES OF PATENT PROSECUTION HIGHWAY

IV. ADVANTAGES OF PATENT PROSECUTION HIGHWAY

V. THE PPH PROGRAMME BETWEEN INDIA AND JAPAN

VI. PROCEDURE GUIDELINES FOR EXPEDIATED EXAMINATION UNDER THE

PATENT PROSECUTION HIGHWAY PROGRAMME

VII. COUNTRY SPECIFIC LAWS OR STUMBLING BLOCKS

VIII. CONCLUSION

IX. BIBLIOGRAPHY
 CRITICAL ANALYSIS OF PATENT PROSECUTION HIGHWAY SYSTEM

 INTRODUCTION

Introduction to the area of study

Patents, like other forms of intellectual property, are jurisdiction specific. In other words, you
obtain protection only in those jurisdictions where you have sought protection. The application
process is long, and can stretch for months, or even years on end. While the end result, if
successful, can be immensely satisfying and rewarding, the prospect of having to repeat this
process in other countries can be quite overwhelming. For this reason, the international patent
community has come up with many methods to simplify and shorten application processes where
an application is being filed in multiple countries. A more recent addition to this is the Patent
Prosecution Highway, intended to reduce the time taken in patent prosecution in one jurisdiction,
where an application has already been successfully prosecuted in another1.

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.

Research Methodology

The data for the article would be taken from the studies which are made to understand the
detailed concepts of this topic. There are ample source of literature available on this topic. The
1
Fast Tracking through the Patent Prosecution Highway in India, available at:
https://www.mondaq.com/india/patent/1225350/fast-tracking-through-the-patent-prosecution-highway-in-india (last
visited on 15th November, 2022).
author has referred to authentic sites to impart the basics of this topic. Various judgments have
been referred to get clear information on the topic. This Research has incorporated Secondary
Data into consideration. There are many researchers who have done extensive research on
specific issues pertaining to this topic. Information and data have been collected from different
secondary sources like various websites, newspapers, books, research papers and different PDF
documents. The research will mainly be a doctrinal study.

Research Problem

The main research problem here is regarding the topic, the procedure regarding Patent
Prosecution Highway (PPH).

Research Questions/ Problems

The present paper explains the concept of Advocate’s right to strike. The following are the
objectives of the present paper:

 To provide an overview about the topic of Patent Prosecution Highway

 To analyze the types of Patent Prosecution Highway system
 To explain the advantages of Patent Prosecution Highway
 To explain the PPH Programme between India and Japan
 To analyze the procedure for expediated examination under the Patent Prosecution
Highway.

 PATENT PROSECUTION HIGHWAY

The Patent Prosecution Highway (PPH) is a programme to fast-track patent examination that
benefits both applicants and patent offices. Under this, an applicant can use positive examination
results from one patent office to streamline prosecution in a second patent office. Effectively,
PPH enables patent offices to re-use or rely on the examination undertaken by other patent
offices to efficiently process patent applications. It reduces workload and timelines for
prosecution. However, the discretion to grant a patent or not remains with the patent office in
which protection is sought.

For an application to be examined via the PPH route, certain minimum conditions must be met:

 The application at the Office of Earlier Examination (OEE) and the application at the
Office of Later Examination (OLE) must have the same earliest date (whether this is a
priority date or a filing date).

 At least one claim must have been held allowable by the OEE;

 Claims at the OLE must sufficiently correspond to one or more claims indicated as
allowable/patentable in the OEE; and

 Substantive examination of the OLE application for which participation in the PPH is
requested has not begun. Thus, if an applicant plans on using a PPH programme, they
must ensure that a request to examine the application has not been filed at the OLE.

Currently, several PPH agreements exist between different patent offices, including most major
ones. For an Indian applicant too, many options are available.

 TYPES OF PATENT PROSECUTION HIGHWAY

1. Bilateral PPHs Programme

A Bilateral PPH programme is a collaborative agreement between two patent offices where
the positive examination result of one patent office can be used by the other patent office.
Indian Patent Office (IPO) is currently a part of a bilateral PPH pilot programme with Japan.
IPO-JPO PPH Pilot Programme 

India’s first PPH programme was introduced in 2019 in collaboration between the IPO and
the Japan Patent Office (JPO). As the name suggests, this is a pilot programme intended to
run for three years, and is limited to 100 patent applications originating from each patent
office. The pilot commenced on 5 December 2019 and will conclude later this year.

The IPO-JPO PPH Pilot is accessible only to applicants that have filed their first application
in either India or Japan. It cannot be availed where the first application was filed in a third
country, and then brought into either India or Japan via the Paris Convention or the PCT
Route. The processes for applying in either office vary slightly, as described below.

a) The IPO process

An applicant can file for a PPH request in India once the IPO notifies that it is accepting such
requests. Currently, only 100 requests are permitted for a given year, with a further limitation
of 10 PPH requests by each applicant per year, either alone or jointly.

Significantly, not all subject matters are covered under this programme in India. The IPO
accepts PPH requests only for applications pertaining to Electrical Engineering, Electronics,
Computer Science, Information Technology, Physics, Civil Engineering, Mechanical
Engineering, Textiles, Automobiles and Metallurgy. Applications related to Chemistry,
Pharmaceuticals, and Biotechnology is not eligible.

PPH requests are to be filed, within 48 months of the date of priority or the date of filing of
the application, whichever is earlier. The fees for filing such requests are about INR 40,000
to 60,000 for a large entity. While filing a PPH request, copies of all office actions issued by
the JPO, claims determined to be patentable/allowable by the JPO along with translations,
references cited by the JPO and the claim correspondence table in Form 5-1 must be
submitted.

b) The JPO process

Unlike the IPO, the JPO accepts applications in all fields of technology. There is also no limit
on the maximum number of applications from a single applicant in a given year. Copies of
documents need not be submitted either, if these are available on the IPO website. Only when
documents cannot be accessed, the JPO examiner may ask the applicant to submit the
documents. Applicants must, however, submit claim correspondence tables. There is also no
additional fee for filing a PPH request at the JPO.

2. Global PPH

A Global PPH programme is a collaborative agreement between multiple patent offices

where the examination result of one patent office can be used by the other patent offices.
Although, the Indian Patent Office is currently not a part of Global PPH programme,
nevertheless, Indian applicants can avail the benefit of Global PPH programme when filing
applications in other jurisdictions. The GPPH is a plurilateral PPH pilot programme covering
3 types of PPH. The GPPH makes the bilateral PPH, the PPH MOTTAINAI and the PCT-
PPH available between any two participating offices. The Global PPH includes 27 patent
offices, including the USPTO (United States Patent and Trademark Office), JPO (Japan
Patent Office), KIPO (Korean Intellectual Property Office), but excluding the EPO
(European Patent Office) or CNIPA (China National Intellectual Property Administration0.
Under the Global PPH, a request for accelerated processing can be made at any participating
office based on the results of the national examination or based on a PCT work product from
any participating patent office. 

a) PCT-PPH

Indian applicants can seek accelerated examination in certain jurisdictions with which the
Indian Patent Office has not signed PPH agreements through the PCT-PPH route. For this, an
Indian applicant must file an international application with the International Bureau (IB) of
the WIPO as the receiving office and select member states of the Global PPH or IP5 PPH as
the International Searching Authority (ISA) or the International Preliminary Examination
Authority (IPEA). PCT-PPH allows applicants to use either a positive written opinion of the
ISA or a positive International preliminary Examination Report (IPER) of the IPEA (filed
under chapter II of the PCT), issued within the PCT framework to apply for accelerated
examination in the office of a member state. Since, the accelerated examination can be filed
on the IPER, even if the written opinion of the ISA, is not positive, the Applicant can make
amendments to the International Application and file a chapter II demand at the IPEA, that
will then issue an opinion on the amended application. In case the IPEA issues a favourable
opinion in the form of a positive IPEA, this IPEA can be used to accelerate the prosecution.

However, the applicant must keep in mind that the PCT-PPH cannot be used for applications
that are filed at the European Patent Office or the Chinese Patent Office where the ISA or
IPEA is issued by the same office respectively.

b) IP5 PPH

The IP5 PPH is an agreement between the United States Patents and Trademark Office
(USPTO), European Patent Office (EPO), Japan Patent Office (JPO), Korean Patent Office
(KIPO), and China National Intellectual Property Administration (CNIPA). Still in pilot
stage, the IP5 PPH will continue till January 2023. Under this programme, a PPH request can
be based either on the latest PCT, written opinion of the ISR, IPER issued by one of the IP5
offices or on the examination report issued by the patent office of the member country. Thus,
where the Indian Applicant has received either positive written opinion of the ISR, or a
positive IPER where the IPEA is one of the above-mentioned member offices or a positive
examination report from any of the member patent offices, then the Indian Applicant may use
said positive report to apply for PPH request in any of the other member offices.

c) MOTTAINAI-agreement

PPH MOTTAINAI is a simpler PPH-agreement that came into effect from July 15, 2011, and
has been signed by JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP
Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain). Under the
PPH MOTTAINAI program, the original priority application, from which a patent family
stems, may now originate from any country. Thus, where the first priority application is filed
in India, and corresponding application claiming priority from the Indian application are filed
in any of the signatory countries, and a grant is obtained in a signatory country. Then the
grant can be used to file a request under PPH programme to accelerate prosecution in any
other signatory country. A flowchart explaining the same is provided below. Additionally,
this agreement allows the use of a decision to grant originating from any of the participating
offices to request prosecution under the PPH at any other one of the participating offices,
provided a mutual PPH-agreement exists and remaining requests are met within one patent
family. A flowchart explaining the same is provided below:
Thus the PPH MOTTAINAI program allows the Indian Applicants to take advantage of the
PPH-agreements between the participating countries, for applications that are first filed in India.
In conclusion an applicant can make a PPH request in any other country, if there is bilateral
agreement between the countries.

 ADVANTAGES OF PATENT PROSECUTION HIGHWAY

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding
applications filed in participating intellectual property offices. Under PPH, participating patent
offices have agreed that when an applicant receives a final ruling from a first patent office that at
least one claim is allowed, the applicant may request fast track examination of corresponding
claim(s) in a corresponding patent application that is pending in a second patent office. PPH
leverages fast-track examination procedures already in place among participating patent offices
to allow applicants to reach final disposition of a patent application more quickly and efficiently
than standard examination processing2.
PPH, through the exploitation of all the search/examination-related information of the OEE,

a) Delivers lower prosecution costs,

b) Supports applicants in their efforts to obtain stable patent rights efficiently around the
world; and
c) Reduces the search/examination burden and improves the quality of the examination of
the major patent offices in the world.

The Patent Prosecution Highway was first developed between the USPTO and the Japan Patent
Office ("JPO") as a pilot program that began on July 03, 2006 3. This Pilot program was started to
explore a way to reduce burden on both the US and Japan patent offices for the same patent filed
in both the countries. The sole purpose of this pilot project was to expedite the patent
examination in the second office by considering the examinations results of the first office of
applications if the patent application was found to be patentable in the office of first examination.

 THE PPH PROGRAMME BETWEEN INDIA AND JAPAN

India and Japan have always been celebrating a very close collaboration in almost every aspect.
The two bid Asian countries have partnered in a number of projects and now another partnership
have been marked in the field of intellectual property rights. Since 2015 the two countries have
been initializing various cooperative steps in the field of IPR. In 2015 the two countries entered
in the Memorandum of Cooperation (MoC) in order to further the investment and business
expansion by Japan's industrial sector in India. Further in May 2017, the Office of Controller
General of Patents, Design and Trade Marks (CGPDTM) of India and patent office of Japan
signed an enhanced new action Plan. It was agreed that both the national bodies would start new

2
Patent Prosecution Highway, available at: https://www.mondaq.com/india/patent/767152/patent-prosecution-
highway-pph (last visited on 15th November, 2022)
3
 Patent Prosecution Highway (PPH) : Fast Track examination of Applications, available at:
http://www.uspto.gov/patents/init_events/pph (last visited on 15th November, 2022)
initiatives with respect to IPR. Action plan included follow up training courses for new patent
examiners of CGPDTM or sending JPO officials who are well- versed with patent prosecution
highway to India4.
In one of the latest event on October 30th of this year the head of state of both the countries
advanced their collaboration for developing and enlarging the scope of intellectual property
rights by realizing the true potential of India-Japan economic relationship. The two partner
countries emphasized on Patent prosecution which led to Japan's strong sustenance for key
transformational enterprises such as "Make in India", "Skill India" and "Clean India Mission",
through sharing of resources and advanced technologies, and active mobilization of Japanese
public and private sector investments. The number of patent filings by Japanese Companies in
India has nearly tripled over the last decade. Ascertaining such collaboration of the two countries
in the area of IPR, Japan and India established to start a bilateral Patent Prosecution Highway
Program on experimental basis in specifically recognized fields of inventions during the first
quarter of Financial Year 2019. Through this, they welcomed the expansion of Japan's Foreign
Direct Investment in India under the "India- Japan Investment Promotion Partnership", the
progress made in Japan Industrial Townships (JIT) and other initiatives included in the Japan-
India Roadmap for Investment Promotion.
At the Japan-India Summit Meeting on October 29, 2018, the leaders of the two countries
concurred to start a bilateral PPH program on a pilot basis in certain identified fields of
inventions in the first quarter of fiscal year 2019. Under the program, Japanese companies can
request expedited examinations in India through simplified procedures, based on their
applications whose claims have been determined to be patentable in Japan. The number of IP
offices that Japan has set up in the PPH program will reach 43.Going forward; the Japan Patent
Office (JPO) continues supporting Japanese companies to promptly acquire patents overseas, by
expanding the PPH network, as well as standardizing and simplifying the procedures at IP
offices worldwide5.

4
Bridging India and Japan via the Patent Prosecution Highway (PPH), available at:
https://www.mondaq.com/india/patent/919730/bridging-india-and-japan-via-the-patent-prosecution-highway-pph
(last visited on 15th November, 2022)
5
 Patent Prosecution Highway, available at:
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf (last visited on 15th November, 2022)
  PROCEDURE GUIDELINES FOR EXPEDIATED EXAMINATION UNDER THE
PATENT PROSECUTION HIGHWAY PROGRAMME

The guidelines are issued to address the procedures that applicants need to follow while
requesting for expedited examination under the PPH pilot program. Applicants can request
expedited examination by a prescribed procedure including submission of relevant documents on
an application which is filed with the Office of Later Examination (OLE) and satisfies the
requirements described in these guidelines under the PPH pilot program between IPO and JPO
based on the application which is determined to be patentable by the Office of Earlier
Examination (OEE)6.

In these guidelines, the Office of Later Examination (OLE) with which applicants file a PPH
request and the Office of Early Examination (OEE) which determines patentability of claims of
an application before the OLE are as follows:   

Office of Later Examination (OLE)Office of Early Examination (OEE)

PPH request to the IPO IPO JPO

PPH request to the JPO JPO IPO

When filing a request for the PPH pilot program, an applicant must submit information in the
prescribed Form presented in Chapter 5 of these guidelines, to the Office of Later Examination.
While submitting a request to Indian Patent Office under the said PPH program, the following
points are to be noted:

 The number of the requests for the PPH in IPO will be limited to 100 cases per year on
first come first serve basis.

6
Patent Prosecution Highway: A landmark in Patent Prosecution in India, available at:
https://www.khuranaandkhurana.com/2019/12/09/patent-prosecution-highway-pph-a-landmark-in-the-history-of-
patent-prosecution-in-india/ (last visited on 15th November, 2022).
  An applicant, who has filed a patent application, either alone or jointly with any other
applicant, shall not file more than 10 PPH requests to IPO per year.

 Request for assigning special status for expedited examination under the PPH is required
to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines. When the
OLE decides that the request is acceptable, the application is assigned a special status for
an expedited examination under the PPH.

 An applicant/Authorized agent can file the request for expedited examination on Form
18A only after the request for assigning special status filed on form prescribed in chapter
5 is accepted by the Indian Patent office. The decision on acceptance/rejection/defect
noticed shall be communicated to the Applicant/Authorized agent through email as well
as message on e-filing portal.

 In case of defects in form 5-1, the applicant will be provided opportunity to rectify the
defects within 30 days from the issue of notification of defects by IPO.

 Notwithstanding the above procedure, the timelines for filing a request for expedited
examination shall be as prescribed under the Patents Rules, 2003.

Further Requirements for the PPH request to the Indian Patent Office:

 Under this PPH Pilot Program, the IPO will receive Patent applications only in the
technical fields of Electrical, Electronics, Computer Science, Information Technology,
Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy.

 The application under PPH may be filed in accordance with the provisions of rule 24C
(1) (j) of Patents Rules 2003.

 Except where the application has already been published under sub-section (2) of section
11A of the Patents Act, 1970, or a request for publication under rule 24A has already
been filed, a request for expedited examination shall be accompanied by a request for
publication under rule 24A. (rule 24C (3), the Patents Rules, 2003)

 A request for expedited examination shall be made in Form 18A within forty-eight
months from the date of priority of the application or from the date of filing of the
 application, whichever is earlier.

 The request for expedited examination in Form 18A shall be submitted by electronic
transmission.

 The prescribed fee for expedited Examination shall be paid as prescribed under item no.
14A or 14B as applicable, of the First Schedule of the Patents Rules, 2003.

 When an applicant files a request for an expedited examination under the PPH pilot
program to the IPO, an applicant must fill the form shown on 5.1 as “Information for
PPH request to the IPO (IPO as OLE, JPO as OEE)”.

Documents to be submitted by the Applicant in Indian Patent Office (if IPO as Office of Later
Examination):

a) Copies of all office actions (which are relevant to substantial examination for
patentability in the OEE) which were issued for the corresponding application by the
OEE, translations of them and a self-certification of the translations
b) Copies of all claims determined to be patentable/allowable by the OEE and translations
of them and a self-certification of the translations.
c) Copies of references cited by the OEE examiner: If the references are patent documents,
the applicant doesn’t have to submit them because the OLE usually possesses them.
When the OLE does not possess the patent document, the applicant has to submit the
patent document at the examiner’s request. Non-patent literature must always be
submitted.
d) Claim correspondence table which indicates how all claims in the OLE application
sufficiently correspond to the patentable/allowable claims in the OEE application.

 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 country7.

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’ provision where
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

7
Patent Prosecution Highway: The other side of the coin, Indian Review of Advanced Legal Research, available at:
https://www.iralr.in/post/patent-prosecution-highway-the-other-side-of-the-coin (last visited on 15th November,
2022)
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.

 BIBLIOGRAPHY
 Fast Tracking through the Patent Prosecution Highway in India, available at:
https://www.mondaq.com/india/patent/1225350/fast-tracking-through-the-patent-
prosecution-highway-in-india
 Patent Prosecution Highway: The other side of the coin, Indian Review of Advanced
Legal Research, available at: https://www.iralr.in/post/patent-prosecution-highway-the-
other-side-of-the-coin
 Patent Prosecution Highway, available at:
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf
 Patent Prosecution Highway: A landmark in Patent Prosecution in India, available at:
https://www.khuranaandkhurana.com/2019/12/09/patent-prosecution-highway-pph-a-
landmark-in-the-history-of-patent-prosecution-in-india/
 Bridging India and Japan via the Patent Prosecution Highway (PPH), available at:
https://www.mondaq.com/india/patent/919730/bridging-india-and-japan-via-the-patent-
prosecution-highway-pph
 Patent Prosecution Highway, available at:
https://www.mondaq.com/india/patent/767152/patent-prosecution-highway-pph
 Patent Prosecution Highway (PPH) : Fast Track examination of Applications, available
at: http://www.uspto.gov/patents/init_events/pph