Streamlining patent-related procedures
India is racing ahead to make it to the crest of the emerging economies wave and is consequently pulling along various sectors of the economy that contribute to economic development. Infrastructure, finance, science and technology, IP and human resources are some of the most important sectors that contribute to economic development. IP has taken a position of particular significance in India’s economy, especially after India became a signatory to the WTO’s Trade-Related Aspects of IP Rights (TRIPS) Agreement.
The entire world is observing developments and milestones on the journey of the Indian IP sector through a magnifying glass. Judgments from the Indian courts are also creating butterfly effects in other major economies. While the judgment in Novartis v Union of India incensed big pharma, many other developing economies are looking at taking a leaf out of the Indian Patents Act and especially Section 3(d) to incorporate it into their respective patent acts for understandable benefits.
Issuances of compulsory licences are also often in the news in India, while patent litigation is gaining momentum, with the number of patent lawsuits filed increasing steadily. On the other hand, more and more multinational corporations are setting up research and development centres in India, thus increasing the technological output of India and the need to protect it. With this feverish technology and patent activity, India is moving towards becoming an increasingly sought-after destination for patent filings. With the increased demand for filing, creating a conducive environment is the responsibility of the Indian Patent Office (IPO).
The discussions below are excerpts from a meeting held between Chaitanya Prasad, the Controller General of Patents, Designs and Trademarks, and the team at Solomon & Roy.
The IPO has streamlined many processes and initiated new processes for the efficient filing and prosecution through to grant. E-filing, which was initiated some time ago, has been given a facelift and the IPO is directing more applicants to this facility by levying a surcharge of 10 percent on conventional paper-based filing. Moreover, e-filing processes have been streamlined since its inception to improve the efficiency of e-filings, proving to be advantageous for applicants and the examiners at the IPO.
"With all these improvements to the efficient functioning of the IPO, it is apparent that it is gearing up on all fronts to meet the increased inflow of patent filings."
The IPO has also increased the transparency of its processes. The Dynamic Patent Utilities facility available on the IPO website provides a sneak peek at the various quantitative and qualitative aspects of patent prosecution happening at all four branches of the IPO, in Mumbai, New Delhi, Chennai and Kolkata.
The facility provides the following valuable information:
a) A list of expired and non-renewed patents across all technological arts over a specific time period;
b) The number and details of disposed applications for any particular month across all four branches of the IPO;
c) The year and month of examination requests for which First Examination Reports (FERs) are being currently issued (patent applicants can easily assess when their applications will probably be examined);
d) The number of FERs issued in the major technical arts of electrical/electronic engineering, biotechnology, chemistry and mechanical engineering across all four branches of the IPO (this facility also provides a hyperlink to details of applications for which the FER has been issued along with a facility to view the FER);
e) Information on the working of patents under Section 146; and
f) The status of patent applications selectable by their technical arts. We are hopeful that much more dynamic information will be made available through the IPO website in the near future.
The load ratio per patent examiner in the IPO is considerably higher than the ratio in other countries and the IPO is therefore taking steps to induct more technically qualified examiners. Last year, around 115 new examiners were inducted and there are plans to induct around 140 new examiners this year. The IPO’s target is to reduce the waiting time for issuance of an FER from the current four to five years to around 30 months by 2019–2020 and then to two years by 2020–2021. The waiting time is the time taken for the issuance of an FER from the date of an examination request.
Another initiative taken by the IPO is to work towards the improvement of consistency and uniformity of practice among different technical art groups and branches of the IPO. In relation to this, the IPO has come up with guidelines for examining applications on the basis of technical arts. The guidelines for examining applications related to biotechnology, computer-related inventions and traditional knowledge have already been implemented by the IPO. The guidelines for examining applications related to pharmaceuticals are in draft form and will be implemented shortly.
With all these improvements to the efficient functioning of the IPO, it is apparent that it is gearing up on all fronts to meet the increased inflow of patent filings in the future. This is a sign of more facilities and initiatives to come in the next few years, not just from the IPO but in general by the Union Government of India towards enforcement and commercialisation of IP in India.
Mahua Roy Chowdhury is a partner of Solomon & Roy. She can be contacted at: mahua@solomonandroy.com
Gopalakrishnan Ramakrishnan is an associate at Solomon & Roy. He can be contacted at: gopalakrishnan@solomonandroy.com
