lndia focus: a roadmap for success
In June 2017, the Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017 was introduced in the US. Taking a cue from the growing concern in the US regarding weakened patent protection, it is time to analyse how Indian patent law may also be amended to strengthen India’s position globally, particularly in view of India being ranked 43rd on the Global IP index of 45 states.
Some ways in which stronger patent protection may be implemented are included below.
Expedited examination at the Indian Patent Office
In an endeavour to expedite examination, Rule 24C was introduced in the Patents Rules, 2003 arising out of a writ petition, Nitto Denko v Union of India. In July, a patent was granted by the Indian Patent Office (IPO) within nine months of filing of request for examination and four months of converting it into an expedited request. However, the grounds for expedited examination under Rule 24C are limited and one can apply for expedited examination only on grounds that India has been indicated as international search authority or elected as an international preliminary examination authority in the corresponding international application; or if the applicant is a start-up.
There is a need to expand the scope of expedited examination. For regular examination under Rule 24B the timelines that are provided are not adhered to. The IPO should ensure that the timelines are followed and patents are granted without delay.
Patent term adjustment/waiver of maintenance fees
The provision of patent term adjustment/waiver of maintenance fees for time lost during patent prosecution at the IPO should be added. The patentee should not be penalised for the delay caused in examining patent applications, sometimes extending up to ten years since patents are granted for only a limited period.
Promotion of certain technologies
Special provisions may be introduced to promote green technology, blockbuster drugs, orphan drugs, drugs that have short shelf life, etc.
Burden of proof in patent matters and presumption of validity
By way of well-defined provisions, the burden of proof for establishing invalidity should be clearly on the party challenging the patent. The standard of proof should be by ‘clear and convincing’ evidence. Similar to section 31 of the Trademarks Act, 1999, which provides ‘Registration to be prima facie evidence of validity’, there should be presumption of validity of the patent once granted.
Limitations on challenging a patent
Current law allows repeated challenges to a patent, sometimes by same the entities, during pre-grant opposition, post-grant opposition, revocation and counterclaims. No entity should be entitled to multiple bites of the apple as this will merely hamper and discourage innovation. Therefore, such limitations should be introduced in the Patents Act.
Evidence in patent matters
Recently, in a patent litigation a Delhi High Court judge observed that there are discrepancies in the manner in which the evidence is led in patent matters. The current practice is that expert testimony is filed after all pleadings have been completed, and pleadings/issues are vague and do not cover the specific technical points taken up by the experts in their evidence. Thus, there is a need to streamline the evidence procedures in patent matters.
