Expedited Examination: An Approach For Fast Patent Grants In India
The patent registration process in India involves numerous steps such as filing a patent application, publication of the patent application, examination of the patent application, grant of the patent application, and maintenance of the issued patent. The typical time period to receive the grant of the patent application in India is 4 -5 years. In India, the examination of the patent application can begin solely when filing a request for examination with the Indian Patent Office. In order to expedite the grant of the patent application, the Patent Office has amended the Indian Patent Rules, 2003 in the year 2016 to introduce the expedited examination process and further amended the Indian Patent Rules, 2003 in the year 2019 to broaden the requirements of filing the request for expedited examination. This article intends to discuss only the eligibility or requirement of filing the request for expedited examination in India.
Requirements for filing a request for Expedited Examination
In pursuant to rule 24 (C)(i)(a)-(j) of the Indian Patent Rules, 2003, the applicant mentioned below may file a request for expedited examination in Form 18A along with the prescribed fee within the period as prescribed in rule 24B of the Indian Patent Rules, 2003 (as amended).
(1) The applicant has chosen India as the International Searching Authority (ISA) or an International Preliminary Examining Authority (IPEA) in the corresponding PCT patent application.
(2) The applicant is a start-up.
(3) The applicant is a small entity.
(4) One of the applicants is a female if the applicant is a natural person.
(5) The applicant is a department of the government.
(6) The applicant is an institution established by Central, Provisional, or State Act which is owned or controlled by the government.
(7) The applicant is a Government company as defined in clause (45) of section (2) of the Companies Act, 2013.
Explanation: Clause (45) of section (2) of the Companies Act, 2013 states that: “Government company” means any company in which not less than fifty-one percent. of the paid-up share capital is held by the Central Government, or by any State Government or Governments, or partly by the Central Government and partly by one or more State Governments, and includes a company which is a subsidiary company of such a Government company”.
(8) The applicant is an institution wholly or substantially financed by the government.
Explanation: The term, “substantially financed” shall have the same meaning as in the explanation of subsection (1) of section 14 of the comptroller and Auditor General’s (Duties, Powers, and Conditions of Service) Act, 1971:
Subsection (1) of section 14 of the comptroller and Auditor General’s Act, 1971 states that: “Where anybody or authority is substantially financed by grants or loans from the Consolidated Fund of India or of any State or of any Union territory having a Legislative Assembly, the Comptroller and Auditor-General shall, subject to the provisions of any law for the time being in, force applied to the body or authority, as the case may be, audit all receipts and expenditure of that body or authority and to report on the receipts and expenditure audited by him.
Explanation: Where the grant or loan to a body or authority from the Consolidated Fund of India or of any State or of any Union territory having a Legislative Assembly in a financial year is not less than rupees twenty-five lakhs and the amount of such grant or loan is not less than seventy-five percent of the total expenditure of that body or authority, such body or authority shall be, deemed, for the purposes of this sub-section, to be substantially financed by such grants or loans as the case may be”.
(9) The applicant/application pertains to a sector that is notified by the Central Government on the basis of a request from the head of the department of the Central Government.
(10) The applicant under an arrangement for processing a patent application pursuant to an agreement between the Indian Patent Office and a Foreign Patent Office.
Evidence of eligibility for availing the expedited examination route
In order to avail of the expedited examination route, the applicant has to mandatorily submit the documents as evidence of eligibility along with Form-18A. The request for expedited examination filed by the applicant without evidence will not be considered by the Indian Patent Office. The following is the documents that are considered as a support of eligibility to avail the request for expedited examination of Indian applicant.
• The ISA number or IPEA number issued by the IPO as evidence for India as ISA or IPEA for the corresponding international application.
• The certificate of recognition as a start-up issued by the Department for Promotion of Industry and Internal Trade (DIPP) for Start-ups.
• Micro, Small and Medium Enterprises (MSME) registration certificate for Small entity.
• Photo Identity card issued by the Central or State government of India for the female applicant.
• Any documents or certificates issued by the Central or State government of India for the applicant mentioned in points 5 to 10 above.
In the case of the foreign applicants, any documents or certificates issued by the respective countries can be submitted as evidence of eligibility along with Form-18A to avail the request for an expedited examination route.
The expedited examination route is certainly beneficial to the applicant expecting the faster grant of the patent application in India. The eligible applicant can make use of the expedited examination route and avail the advantage of receiving an earlier grant of the patent application in India.