The Patent law in India is governed by the provisions specified in the Patents Act, 1970, hereinafter "The Patents Act". The aforementioned provisions are further supplemented by the Patent Rules, 2003, hereinafter "The Patent Rules", and various guiding publications, such as the Manual of Patent Office Practice and Procedures, patent examination guidelines, and other relevant publications. For reasons such as compliance to international agreements and treaties, the omission of outdated laws, changes in internal regulations, uniformity to global practices and requirements, and the emergence of new technologies and their impact in our everyday lives, the aforementioned guiding publications relating to the Patent law are updated from time to time. Reflecting on the legislative reforms and amendments in the Indian Patent law, The Patents Act was last amended in 2005. Since then, The Patent Rules have been amended multiple times, the manual has been periodically updated, and the patent examination guidelines for various technical areas have also been issued and revised from time to time. All such efforts to streamline the overall patent ecosystem within the purview of the existing Patents Act have been largely appreciated by most of the stakeholders. However, there exists a long-felt need to make changes in certain provisions of The Patents Act itself. Some prevalent issues with The Patents Act are discussed in this article.
Article 27 of the TRIPS Agreement, to which India is one of the signatories, states that patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Further, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. The article also states that members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect order public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. The article also states that members may also exclude from patentability: (a) Diagnostic, therapeutic and surgical methods for the treatment of humans or animals; (b) Plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. On the other hand, Section 3 of The Patents Act provides a wide-ranging list of subject matters which are proscribed from patenting in India. In today's time, Section 3 of The Patents Act needs a major, if not complete, revamp due to global technological development and economic realities. Sections 3(d) and 3(k) are the most commonly cited sections during the patent examination in India. Section 3(d) is particularly relevant for patent applications for pharmaceuticals. It states, amongst other things, that the mere discovery of a new form of a known substance, which does not result in the enhancement of the known efficacy of that substance, is not patentable. Likewise, Section 3(k) is particularly relevant for computer-related inventions and states that mathematical and business methods, computer programs per se, and algorithms are non-patentable. The provisions of Section 3 need to be reviewed to encourage emerging innovations in the areas of pharmaceuticals, software, artificial intelligence, IoT, technologies related to financial services, blockchain, etc. These provisions not only affect multi-national companies; the innovations by Indian companies and start-ups are also getting equally affected by said provisions. Another issue with The Patents Act is the requirements under Section 8. In particular, Section 8(1) requires applicants to voluntarily submit an updated list of the corresponding foreign applications via Form 3 until the grant of Indian patent. Likewise, Section 8(2) requires applicants to submit upon request: search & examination reports issued by other Patent Offices and granted claims with English translations (if applicable), for the corresponding foreign applications. These two provisions of The Patents Act are reflective of the pre-Internet era and cast legal duties on the applicants to periodically submit publically available information to the Indian Patent Office (IPO), which in any case are accessible to IPO through several state of art patent databases, such as WIPO CASE, ESPACENET, etc. On top of that, even a small discrepancy or delay in filing of Form 3 details is considered as an irregularity that needs to be obviated by filing a petition under rule 137 along with the prescribed fee. Applicants end up filing multiple such petitions by the time patent is granted. These provisions, therefore, put an unnecessary burden and huge cost implications onto applicants. In fact, these provisions have been actually disincentivizing the filing of patent applications in India by global companies. In view of the easy accessibility of required information over the Internet, the provisions of Section 8 have lost relevance in today's time. Patent laws in most of the advance jurisdictions do not have identical provisions, let alone the consequences associated therewith, such as revocation of a granted patent for noncompliance with Section 8.
Another burdensome issue is the working statement, i.e., Form 27, which is a unique provision of the Indian Patents Act. Particularly, Section 146(2) requires every patentee and licensee of a granted patent to voluntarily file a working statement every year. This requirement puts additional burden and costs onto patentees/licensees. In fact, the present format of Form 27 requires detailed information that is nearly impossible to procure for most technology areas because it is based on a wrong presumption that one product is covered by one patent. A revised format was circulated which is not yet finalized. Despite the welcome changes, such as consideration of patent pools, the revised format still does not solve most problems associated with the working statement requirement. Comparing the working statement requirement to the practices in counterpart jurisdictions, most of the advance jurisdictions do not have working statement requirements and associated penalties on non-compliance. As a constructive amendment in regard to this requirement, it would be desirable if at least the requirement of voluntary submission of the working statement every year can be repealed so that patentee/licensees are required to submit working statement information only when asked under Section 146(1). Having said that, it needs to be specified in what situations the Controller can demand a working statement. Otherwise, it may lead to abrupt demands for working statements and overall non-predictability. The applicant should also be provided with an option to submit the working statement information in a sealed cover when it includes confidential or business-sensitive information. Lastly, if no changes can be made in the provisions of Section 146, at least the format of Form 27 needs to be drastically simplified to make it feasible to meaningfully fill it up for all technologies. For example, simplified Form 27 can seek a statement only to the extent of working or non-working of patented technology without the quantum and value details. Simplified Form 27 may also include a declaration signed by the patentee/licensee indicating their willingness to submit requested details whenever specifically asked by the patent office, e.g., to decide on a request for a compulsory license.
Another undesirably restrictive provision that needs to be looked into is Section 59(1). This Section basically describes what kind of amendments can be done in claims/specification. Section 59(1) requires amendments to be: (i) by way of explanation, correction, and disclaimer only, (ii) for the incorporation of actual facts only, (iii) supported by the original specification, and (iv) wholly within the scope of original claims. It is submitted that particularly the first and fourth requirements of Section 59(1) are very rigidly interpreted by most, leading to a very limited type of amendments that can be done in claims/specification even before the grant of a patent. Newly added claims are generally objected because of this provision. And the practices with respect to this particular Section are largely divergent amongst different officers. The situation becomes very problematic in case of poorly drafted claims/specification and eventually, innocent applicants get penalized for that. Most of the advance jurisdictions do allow the broadening of claim scope and addition of new independent/ dependent claims if supported by the specification. The first and fourth requirements of Section 59(1) therefore need to be done away with. Alternatively, clarity can be provided by adding corresponding rules in Patent Rules to have a broadest possible and uniform interpretation of Section 59(1) to put an end to divergent practices prevalent amongst different officers and to provide a rightful opportunity of amendments to the applicants, e.g., in sync with the major foreign jurisdictions.
While the problem of delay in patent prosecution due to the backlog of applications pending for examination is being very much dealt with in the appropriate manner, yet there are many old applications that are awaiting a decision from the patent office. There have been instances where a patent has been granted near to the end of its term. Sometimes, patent applications are not processed due to indecisiveness by other agencies, such as the Ministry of Defence (MoD) in case of foreign filing permission to an application allegedly relating to sensitive technology or by National Biodiversity Authority (NBA) for the use of biological resources, etc. To solve such problems, some new provisions in line with international best practices can be included in The Patents Act. For example, the provision of Patent Term Adjustment (PTA) can be included to account for the substantial delay in the prosecution process by the Indian Patent Office by giving day-for-day credits to the normal patent term. Likewise, the provision of Patent Term Extension (PTE) can be included to account for the delay caused due to approvals by other agencies, such as MoD in case of defense or atomic energy-related inventions, NBA for the use of biological resources, regulatory bodies for the safety and efficacy of the product.
Apart from the delay caused by the patent office, many competitors or infringers misuse the provisions of pre-grant opposition provided under Section 25(1) to delay the grant of a competitor's patent and /or increase patent prosecution cost so high that applicant starts considering abandoning the patent application. It is to be noted that there is no fixed timeline to dispose the pre-grant opposition which can be filed by any person any time before the grant of patent. Unlike a post-grant opposition where only a person interested can oppose, it is a prevalent practice amongst opponents to use a straw man for filing a pre-grant opposition. It has been generally observed that patent applications against which a pre-grant opposition is filed generally take a couple of additional years to be disposed. In fact, it is quite possible for the opponents to indefinitely delay the grant of a deserving patent just by filing a series of pre-grant oppositions one after another considering that there is no official fee for filing a pre-grant opposition and that there is no fixed timeline for the disposal of the pre-grant opposition. To stop such malpractices, it is important to scrap the provision of pre-grant opposition under Section 25(1) when the options of filing a post-grant opposition, a revocation petition before the appellate board, or a counter-claim in respect of infringement suit already exist. If that is too far-fetched, at least Section 25(1) and corresponding rules need be amended to impose an official fee and to allow only a person interested to file a pregrant opposition. Apart from that, a limited time window, e.g., 6 months from the date of publication, to file pre-grant opposition and/or fixed timeline to dispose the pre-grant opposition may be introduced to keep a balance between applicant's interest and public interest. Otherwise, opponents as of now are practically allowed to file every year a fresh pre-grant opposition with new prior arts or a new ground of opposition using straw men, thereby never allowing a deserving patent to be ever granted.
Another practical issue is that there is no advance notice of grant in India. Since the Indian patent law does not prescribe for issuance of prior notices, such as "notice of acceptance" or "intent to grant", there is no way for an applicant to know in advance about the issuance of the grant of a patent. There have been instances when a patent application has been granted straight away after the filing the response to an examination report or within a couple of days from the filing of the written submission to a Hearing Notice. As the provisions of The Patents Act disallow filing of divisional applications after the grant of the main application, the sudden and un-announced grant of patent forecloses the opportunity to file divisional applications. This, as may be understood, is a major pain point as the applicant is left with no other remedy to pursue divisional applications. Therefore, it would be desirable to notify the applicants about the upcoming grant of their application, thereby providing a reasonable opportunity of filing divisional applications before the grant of patent. To this end, The Patent Act or The Patent Rules could be amended to have a provision for issuance of a Notice of allowance or an intention to grant notice specifying a reasonable period after which the patent would be issued. This would provide the applicant with a reasonable time window to consider the filing of divisional applications before the grant of a patent. Alternatively, a Rule could be introduced that provides the applicant with a reasonable period post the grant of a patent, for pursuing any divisional applications.
Lastly, the consequences regarding non-compliance to certain timelines mentioned in the Indian Patent Law are quite grave in nature. For instance, in cases where an applicant fails to enter a national phase application in India within the stipulated period under the PCT, the national law does not provide for any remedy to the applicant to file the National Phase application. Likewise, there are no remedies available to an applicant once the applicant misses on the timely filing of a request for examination of a patent application or a reply to a First Examination Report issued in respect of a patent application. Understanding the worth and benefits to the society associated with the whole scheme of patent protection, it would only be fair to have provisions for reinstatements of applications in case of missed deadlines. To serve as a remedy and in accordance with the practices of the major jurisdictions, provisions specifying a time period for reinstatement of the applications could be introduced along with corresponding late fees. Likewise, a similar remedy could also be introduced to provide the applicant with an opportunity to file National phase applications in case of missed National phase deadlines. This would serve best to the applicant's interest and would also bring the currently stringent provisions at par with the best practices prevalent amongst the major jurisdictions.
Apart from the above-mentioned issues, there are many other issues with The Patents Act that need to be addressed. The need of the hour is to bring the Indian patent law up to speed with the ever-changing industry requirements and technological developments that have occurred over the years. A right step in this direction would be to do away with obsolete and irrelevant provisions in the Patents Act, which have been actually disincentivizing patent filing in India. This would certainly bring respite to the applicants from unnecessary burdensome costs and would amplify the patent filings in India.
Legislative Changes required in Indian Patents Act by Joginder Singh and Siddharth Sharma
Article was 1st published in Lexology
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