Patent Prosecution Highway: The fast track to disaster

AS often happens, India is its own worst enemy. Trading partners, multinationals and, sometimes, even voluntary organisations seek new laws or changes in existing regulations to facilitate their business or agendas in different countries. That’s par for the course. But why would the Ministry of Commerce and Industry be willing to give in on such demands when these could have deleterious consequences for the country and undermine its well thought out Indian Patents Act?

The ministry’s Department of Industrial Policy and Promotion (DIPP) that deals with intellectual property matters has signed an agreement with the Japanese Patent Office (JPO) to start a Patent Prosecution Highway (PPH) as a pilot programme. This would allow a patent applicant to demand fast-tracking of his patent application by showing that his product or process has already been granted a patent in Japan. Although PPH only facilitates speedy examination of a patent application in India without guaranteeing the grant of a patent in India, there are clear dangers here.

For one, the patent examiners may be only too happy to rely on the examination report of the JPO and grant patents ignoring the strict patentability norms laid out in the Indian law. The Indian Patents Act is very nearly a one-of-its-kind legislation, which has served as a model for other developing nations, primarily because it lays down strict patentability criteria that lists what cannot be patented. These are sections in the law which drug multinationals have found difficult to circumvent in their quest to extend or even double the term of their patents through “evergreening”strategies. Their ploys that have served them well in other countries do not work in India.

Analysts worry that this trend could lead to the “harmonisation” of India’s patent laws with those of Japan which does not have such strict standards, and with laws of any other country with which such agreements are signed in future. The Indian Patent Office (IPO) is working on changes in the patent law and has circulated the draft proposals to introduce new categories of applicants, who can avail themselves of the fast track route. If a patent has been granted elsewhere, the applicant can seek to be on the PPH provided there is a bilateral agreement between IPO and the foreign patent office which has granted it. So far, India has stoutly opposed harmonisation moves pushed in various fora, notably at the World Intellectual Property Office.

Under the October 2018 agreement signed between DIPP and JPO, the PPH pilot programme is to be started in the first quarter of the 2019 financial year to facilitate the early grant of patents to Japanese companies. Apparently, the Japanese lobby had conveyed its discomfort with the delays in securing in intellectual property protection in India which was a stumbling block to Prime Minister Narendra Modi’s “ease of doing business” claims. A report of the Japan External Trade Organization puts the number of firms operating in India at around 1,000.

If the proposed PPH pilot with JPO works well, there’s bound to be a rush from the patent offices of the US and the European Union, the reason why public health campaigners are a worried lot.

(This article was first published in Down To Earth's February 1-15, 2019 print edition)

Controller General … Economy India