Om Prakash Gupta, the Controller General of Patents, Designs and Trade Marks, issued a notice which stated, without any reasoning, that the number of applications for expedited examination of patent applications would be restricted to 1000. Meaning only 1000 requests filed prior to December, 2016 will be entertained.
The Controller General has placed such a limit by virtue of the powers invested in him by sub-rule (13) of Rule 24C of the Patent (Amendment) Rules 2016. Ritvik has reviewed the entire said statute, but I would specifically like to draw your attention to his section on “Tatkal Patents”, where he discusses the modalities of expedited examinations.
For the benefit of the reader, I have reproduced the relevant portion below.
For filing a request for expedited examination, the patent applicant either:
1. Must be a startup as defined by the Patent (Amendment) Rules, 2016.
OR
2. Must have included India, in their PCT (Patent Cooperation Treaty) application, as an:
A. International Searching Authority (ISO)
OR
B. International Preliminary Examining Authority (IPEA)
Prior to moving on, here is a brief glimpse at PCT’s workings:
You file a PCT application.
You nominate two patent offices as ISO and IPEA.
ISO and IPEA examine your application and record findings.
These recorded findings serve as a document which the applicant can use to approach various party jurisdictions for patent protection. The PCT only seeks to make the application process easier. Through a PCT application, an applicant can approach every party jurisdiction without having to freshly apply every single time. Each jurisdiction, will take into the account its own laws, along with the recorded findings (by ISO and IPEA) and finally, come up with a decision.
Coming back to the original topic at hand i.e. limit on requests for expedited examination:
The expedited request system was formulated to make India look favourable to patent applicants.
I feel the Controller has taken a rather hasty and arbitrary step by placing a cap. I understand that the patent office is heavily understaffed with 2.37 lakh patents pending, but coming up with an arbitrary ceiling is dangerous.
I believe it might be more prudent to restrict and free the application process in accordance with the resultant work pressure. To place a cap right till December might lead to inefficient usage of the already burdened Patent Office.