Patent registration in India has hitherto been a slow and tardy process with inventors/innovators running from pillar to post for 6-7 years before they are able to secure the seal of registration. Considering that the patent term in India is limited to 20 years from the date of filing of the patent application irrespective of any delay in processing of the application, this significantly reduces the patent term and puts the applicants at a considerable loss. While Indian Patent Office has taken a slew of initiatives to upgrade its technological infrastructure and boost e- filing in the recent past, all the efforts will come to a naught if the registration process is not completed in a time bound manner. In fact, even draft National IPR Policy has recognised this problem and enjoined the Office of CGPDTM, the chief administrator of patents, designs and trademarks in India, to fix and adhere to time lines for grant of registration
Government Action on Judicial Intervention
Delhi High Court sought to cure the malaise of protracted delays in patent registration when a writ based on the same issue was filed before it last year.1 Accordingly, during the Pendency of the writ, the Government appointed a Committee to devise a scheme for time bound disposal of pending patent application and to suggest measures so that fresh applications could be decided within the statutory time limit. After duly considering the suggestions made by the Committee, the Court directed the Government to do the following:
- To increase the work force at the Patents Office in accordance with the plan scheme of Modernisation and Strengthening of Intellectual Property Offices (MSIPO) within a period of 9 months to enable issuance of first examination reports within reasonable time.
- To increase the allocation of funds for covering the expenses resulting from creation of additional posts for examiners and training of newly recruited examiners.
- To introduce flexible complementing scheme for the staff of the Patent Office so as to attract the best talent possible and prevent attrition.
- The government was also directed to
constitute a committee to consider the following:
- What are the measures that could be introduced to compensate the patentees for the time consumed in the examination process in case expedited examination is not considered feasible?
- What are the factors that should be considered for expedited or out of turn examination of patent applications, if at all, it can be carried out under the existing provisions of the Patents Act, 1970?
Proposed Measures
The government appointed Committee submitted its report in February this year and has recommended the following
- Regarding Compensation to the
Patentees for the time consumed in the examination
process
- Waiver of maintenance fee is not a feasible solution since such practice does not exist anywhere in the world except US
- The proposal of patent term extension for the time lost in the processing of the application in the Patent Office is not conducive to India as the patent term of 20 years is itself considered too long
- Regarding Out of
turn/expedited examination
- Out of turn/expedited should not normally be permitted unless the invention in the application contributed towards public interest
The Committee was unanimously of the view that out of turn/expedited examination could be permitted if the applicant sets up local manufacturing capabilities in India for utilizing the invention as disclosed in the application. Accordingly, inclusion of Rule 24C in the Patent Rules, 2003 was proposed for expedited examination of patent applications.
Looking at other Viable Solutions
Considering that the Committee's proposal limits the benefits of expedited examination solely to entities having domestic manufacturing capabilities in India, it's essential to look at solutions that may expedite the registration process even for those applicants who do not/cannot opt for expedited examination process. In as much as delays in examination process are the result of shortage of examiners, they may be brought down by increasing the no. of sanctioned posts for examiners, incentivising good performance and imparting comprehensive, modern and job oriented training to newly recruited examiners. One of the other efficient remedy could be joining a Patent Prosecution Highway (PPH) which can significantly accelerate patent examination process and also improve patent quality in the country. PPH allows the participating patent offices to share the prior art and examination information. Thus, Office of Second filing(OSF) can use the prior art search and the examination proceedings of the Office of First Filing(OFF) which accelerates the examination process significantly in the OSF. This also decreases no. of office actions in the OSF thus reducing the time for pendency of the application and total cost incurred on patent prosecution. Currently, many countries including some of the Asian countries are part a no. of PPH bilateral/multilateral agreement with other countries while Global PPH program and IP5 PPH Programme are being run on trial basis so as to evaluate their feasibility and determine the possibility of fully implementing these programs on a global scale. Thus the time is ripe to consider the suitability of the model for India. Interestingly, while Draft National IPR Policy mentions that steps need to be taken to establish close cooperation with IP Offices in other countries in areas of capacity building, human resource development, access to databases, best practices in search and examination, it falls short of expressly mentioning PPH.
Footnote
1. Nitto Denko v. Union of India, W.P.(C) No 3742/2013, Delhi High Court
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