Electronic filing of PPH request commences at IPO, Indian patent office to be at par with USPTO and more

In this week’s Patent News – Electronic filing of PPH request commences on 5th December 2019, 70 requests already filed; Indian Government to establish IPO based on the model of USPTO; CII publishes unique report on using IP as collateral at the 5th edition of the annual IP Conference; Sisvel and Spotify enter into patent licensing agreement; InterDigital files patent infringement lawsuit against Huawei; Avanci signs patent licensing agreement with Volvo Cars; Hong Kong hosts 9th edition of Business of IP Asia Forum; GCC Patent Office launches new search platform for Patents and other news updates.


Electronic filing of PPH request commences on 5th December 2019, 70 requests already filed.

On 4th December, the Indian Patent Office issued a notification indicating the commencement of the recently introduced Bilateral Patent Prosecution Highway (PPH) pilot program between the Indian Patent Office (IPO) and the Japan Patent Office (JPO). According to the notification on ipIndia, the bilateral agreement will come into force from 5th December 2019 and will remain active for a period of three years. Applicants intending to utilize the new route may refer to the – ‘Procedure Guidelines for PPH’ when filing a request for the PPH pilot program. The Applicant must also submit all the prescribed information while electronically filing Form 5-1 under Chapter 5 of the said guidelines.

The notification also highlights the following points:

  • The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.
  • 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 under the PPH is required to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines
  • An applicant/Authorized agent can file the request for expedited examination on Form 18A only after the request for assigning Special Status filed through the form prescribed in Chapter 5 is accepted by IPO.
  • 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.

You may click here to access the official notification and here to access the Procedure Guidelines.

Expedited Examination under PPH program – only 30 more requests allowed.

In less than a week since the launch of the PPH program between Japan and India, 70 requests for expedited examination have already been filed by various applicants and only 30 more requests may be filed until the end of this year. While the notification states that the number of requests under the PPH program will be limited to 100 cases per year on first come first serve basis, it is not clear if this cap would be increased in the calendar year 2020. The patent office had similarly capped the number of expedited examination requests to 1000 when it was introduced first by the Indian patent office in 2016.

CII publishes unique report on using IP as collateral at the 5th edition of the annual IP Conference

The Confederation of Indian Industry (CII) recently published a report on the advantages of using Intellectual Property as collateral for financing by drawing examples from all over the world. The report titled – “Creating IP-led technology for a $5 trillion economy,” was published at the 5th edition of the annual IP Conference, in New Delhi.

According to the CII website, the highlights of the report are as follows:

  • While the regulatory environment is evolving globally and initiatives to provide impetus to IP-backed financing are underway, some economies such as Singapore exhibit a sophisticated regulatory environment as well as a robust infrastructure for IP financing.
  • IP financing transactions where IP is used as a collateral, have declined over the past five years globally. However, transaction financing where acquired IP is the primary collateral, and monetizing IP under a distress situation have gained traction.
  • There is increasing interest from large, global PE funds in innovative, IP-based companies. These funds are not only investing in IP-based companies, but also providing finance to help protect IP in certain situations.

You may click here to access the official CII media release webpage for more information.

Indian Government to establish IPO based on the model of USPTO

While speaking during the Question Hour at the Rajya Sabha, last Friday, the Union Minister, Piyush Goyal said that the government is making efforts to set up an Intellectual Property Office that is completely computerized. In line with the United States Patent and Trademark Office (USPTO), the Indian government aims to establish an office where the activities of four different IP offices are combined into one. He said, “In the whole of U.S, there is one IPR Office and everybody works online, I am trying to develop that module here.” In addition to this, the Union Minister also spoke about the changes bought by the government to protect Traditional Knowledge, which would have otherwise been lost.


Sisvel and Spotify enter into patent licensing agreement

On 5th December 2019, Sisvel and Spotify officially announced that the duo has entered into a patent licensing agreement in relation to Sisvel’s Recommendation Engine patents. The world-wide patent licensing agreement gives Spotify the access to a patent portfolio comprising of over 350 patents, including international coverage with filings in many countries.

InterDigital files patent infringement lawsuit against Huawei

InterDigital, Inc. has instituted a lawsuit against Huawei for allegedly infringing its patent portfolio consisting of 3G, 4G and 5G standards-essential patents (SEPs). The lawsuit instituted in the U.K, seeks the determination of “fair, reasonable and non-discriminatory (FRAND) terms.” 18th months ago, Huawei’s SEP licensing agreement with InterDigital expired and since then the companies have been making efforts to negotiate the FRAND terms and conditions for a global licensing agreement. The current lawsuit has been filed by InterDigital in the High Court of Justice of England and Wales. InterDigital is also seeking a “FRAND injunction” which is similar to what was awarded previously by the High Court of Justice in Unwired Planet v. Huawei.

Avanci signs patent licensing agreement with Volvo Cars

Avanci recently announced that the company has signed a patent licensing agreement with Volvo Cars giving access to 2G, 3G and 4G patents of the 36 patent owners currently present in the Avanci marketplace. Founder and CEO of Avanci said “We are very pleased to have Volvo Cars, one of the most well-known and respected car brands in the world and a leader in connectivity, as a licensee.”


Hong Kong hosts 9th edition of Business of IP Asia Forum

China’s Hong Kong Special Administrative Region (HKSAR) government, the Hong Kong Trade Development Council (HKTDC) and Hong Kong Design Center recently hosted the 9th edition of Business of IP Asia Forum. The theme for the Forum was – “Building an Innovative and Inclusive Future for Businesses.” The two-day event witnessed the presence of over 70 speakers in the field of IP. The Executive Director of HKTDC, Margaret Fong, said that Hong Kong has been well-known for trade, finance and innovation and will continue to be important for creating IP, enabling technology transfer, licensing etc. Another speaker, Carrie Lan, Chief Executive of HKSAR said that the government has introduced a new bill in the legislature related to the registration of Trademarks and added that a new patent granting system will be introduced in two-weeks.

GCC Patent Office launches new search platform for Patents

On December 3rd 2019, the GCC Patent Office, in collaboration with WIPO, launched a new patent search platform called “WIPO Publish.” The patent search platform will enable users to have access to all the patents granted by the GCC Patent Office. It will also provide access to all the patent documents that have been filed with the Office. Further, the search tool is said to be in accordance with WIPO’s standards for patent search databases. According to the official GCC Patent Office website, the contents of the patent application can be searched in more than one language. You make click here to access the official notification.

Authored by Vibha Amarnath

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