JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/28th December, 2018
To: Shri Sushil K Satpute
Director, DIPP,
Ministry of Commerce and Industry,
Government of India
Udyog Bhawan, New Delhi 110011
India
Re: JIPA Comments on the Patents (Amendment) Rules, 2018
Dear Shri Sushil K Sapute,We, the Japan Intellectual Property Association “JIPA”, are a private user organization
established in Japan in 1938 for the purpose of promoting intellectual property protection, with
about 960 major Japanese companies as regular members.
Having learned the draft of the Patent (Amendment) Rules on your website, we would like tooffer our opinions as follows.
1. Patent Rule 24C (Requirement for expedited examination)
We are very grateful for your proposal for this patent rule, an amendment rule, in which
new clauses (c) to (f) are added to the Patents Rules as requirements for expedited examination
to increase the number of applications which are subject to expedited examination. We expectthat this amendment to the Patent Rules will promote operational improvements for expedited
examination in your country.
However, we consider that the definition of the requirement for clause (f) is unclear, making
it difficult to determine whether an application is subject to expedited examination. That is,according to clause (f), only national phase applications under PCT in India can also beinterpreted as being subject to expedited examination. Accordingly, we are concerned thatapplications claiming priority under the Paris Convention might not be subject to expedited
examination.
Through the Second Review Meeting on IP in August, 2018, JPO and the Department ofIndustrial Policy and Promotion, Ministry of Commerce and Industry of the Republic of India
agreed in principle to start a bilateral Patent Prosecution Highway (PPH) program on a pilot
basis in the first quarter of fiscal year 2019. Therefore, in order to provide more convenience1for Japanese applicants, who will file applications under PPH, we respectfully request thatclause (f) should be corrected to clearly ensure that applications claiming priority based onJapanese applications under the Paris Convention are subject to expedited examination.
2. Patent Rule 55 (Pre-grant opposition to the patent)
We basically agree to this draft rule which allows the Patents Rules to clearly stipulate that apre-grant opposition shall be processed by a bench.
However, for early settlement of an opposition, we propose that three members, not twomembers, should be involved in the opposition proceeding from the beginning thereof.
According to the Draft Rules, only when two members differ in opinion, a third member shallbe involved in the proceeding. From that point in time, the third member starts to process theopposition of interest (or consider the history of the proceeding carried out by the two members),
which is thus thought to require an additional time period. We worry that this may go against
the policy of your country that aims at early disposition.

Therefore we consider that

constituting a bench comprising three members from the beginning of the opposition proceeding
allows early final disposition of the case.
In addition, in order to ensure the fairness of the decision on the opposition, we also
respectfully request that the members of the bench should be nominated by a person other thanthe Controller who shall constitute the bench.
Your deeply consideration on these matters will be appreciated.
Yours faithfully

Osamu IKEMURAManaging Director
Japan Intellectual Property Association2