Tag Archives: IPO

Indian Patent office (IPO) asks for details of ‘working of patents’ in India – does it herald the beginning of a new chapter in the IPR regime of the country or it could trigger another raging debate

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A Public Notice dated 24/12/2009 issued by the Controller General of Patents, Design & Trade Marks, directing all Patentees and Licensees to furnish information in Form No.27 on ‘Working of Patents’ as prescribed under Section 146 of the Patents Act (as amended) read with Rule 131 of the Patents Rule 2003 ( as amended). The notice also draws attention to penalty provisions in the Patent Act, in case of non-submission of the aforesaid information.The Last date for filing the information is March 31, 2010. Only history will tell us about the possible future impact of this notification.Why is this information needed by the IPO?

Indian Patent Law specifies a provision for submission of information in Form 27 regarding the details of ‘working of a patent’ granted in India, which is a statutory requirement.

The information sought by the IPO in Form 27 can be summarized as follows:

A. For not ‘working of patent’: the reasons for not working and steps being taken for ‘working of the invention’ to be provided by the patentee.

B. In case of establishing ‘working of a patent’, the following yearly information needs to be provided:

1. The quantity and value of the invention worked; which includes both local manufacturing and importation.
2. The details to be provided if any licenses and/or sub-licenses have been granted for the products during the year.
3. A statement as to whether the public requirements have been met partly/adequately to the fullest extent at a reasonable price.

NB:

• A fine of up to (USD $25,000 may be levied for not submitting or refusing to submit the required information by the IPO.
• Providing false information is a punishable offence attracting imprisonment of up to 6 months and/or a fine.

What would amount to ‘Local Working of Patent’ in India?

Obviously, the question will arise what then would constitute ‘working of patent’ in the country. It is generally believed that ‘commercial exploitation’ of patented products in India will mean local ‘working of patent’ in the country.

This is still a controversial issue as some experts claim that ‘local working of patent’ can be established only through local manufacturing and thus importation of such products will not be considered as ‘local working of patent’ in India.

However, other groups of experts opine, as a signatory of article 21 (1) of TRIPS, India is under clear obligation to accept importation of a locally patented product as ‘local working of patent’.

How affordable is affordable?

Besides, ‘local working of patent’ issue, section 84.1 of the patent Act 2005 under ‘Compulsory licenses’ says:

“At any time after the expiration of three years from the date of the (grant) of a patent, any person interested may make an application to the controller for grant of compulsory license on patent on any of the following grounds, namely:

a. that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or
b. that the patented invention is not available to the public at a reasonably affordable price, or
c. that the patented invention is not worked in the territory of India.”

The question, therefore, will arise, who will determine whether a patented product is available to the public at a reasonably affordable price or not? Moreover, what will be the measure, formula or yard to stick to decide reasonably affordable price? The next question could be – reasonably affordable price for whom … for the rich minority… or for around 300 million middle class population of the country… or for another 713 million lower middle class or poorer section of the society?

How ‘affordable’ then will be considered as ‘affordable’ in such cases?

Conclusion:

Whatever may be the case, it would be interesting to know, how the Indian patent Office (IPO) would deal with these details. In any case, such information will not remain a secret. ‘The Right to Information Act’ will help ferret all these details out in the open.

Thus, when the ‘moment of truth’ comes, one will be quite curious to note how the proponents of ‘compulsory licensing (CL)’ would try to push their envelope hard enough on this score to establish their view points… And on the other hand how would the innovator companies establish that the price is indeed a function of the value that the product would offer… and in that process would gear themselves up with relevant and credible, possibly ‘Health Technology Assessment (HTA)’ details to establish the price premium of patented products in India to meet the ‘unmet needs of the ailing patients.’

Striking a right balance in this matter by the IPO between rewarding fruits of expensive, risky and time consuming innovation, on the one hand, and help improving access to affordable modern medicines to a vast majority of the population of the country, on the other, will indeed be a daunting task.

By Tapan Ray

Disclaimer: The views/opinions expressed in this article are entirely my own, written in my individual and personal capacity. I do not represent any other person or organization for this opinion.

Indian Patent offices (IPOs) have started showing improvement in their functioning; still lot of grounds to cover.

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Indian Patent offices are located, with four clearly specified jurisdictions, at New Delhi, Mumbai, Kolkata and Chennai.

Since last few years enough efforts have been made towards overall capacity building initiatives, training of personnel and digitalizing the huge databank of these offices, with wide scale application of information technology (IT). As a result the patent offices are now having almost a centralized database to provide online services to the users in various areas of their operations. Users are now having the facilities of not only online patent search, but also for online patent applications.

More extensive IT applications are required to achieve greater system efficiency and transparency:

However, to bring in more efficiency and transparency in the system, there is a need to introduce appropriate IT applications in all the transactional interfaces between the patent office personnel and the patent applicants.

Still there are lots of grounds to cover:

Following are the key areas which should be taken care of by the Controller General of Patents, Design and Trade marks (CGPDTM) to make the IPOs more efficient, transparent and effective:

1. The Patent Manual, which provides essential guidelines to the patent examiners to bring in uniformity in the patent application examination process, is long overdue.

2. Many patent applicants feel that there is a need to include the International Non-proprietary Names (INN) in the title of pharmaceutical patent applications by the IPO.

3. Inadequate bandwidth makes the IT system slow, reducing its operational efficiency.

4. Electronic-filing of patent applications has been introduced, but there is no facility of paying the fees online by credit card. This facility should be introduced to make it more convenient for applicants to file patent applications online, adding more speed to the process.

5. Electronic prosecution of patent applications should be introduced to make the patent prosecution virtually paperless and more efficient.

6. Despite new technological measures most patent officers and also the public in general are still following the traditional method of filing the patent applications due to the ease and authenticity of filing records. To encourage applicants to file applications electronically, incentives such as reduced fees may be offered to those who file their applications electronically.

7. The IPOs should digitize all the physical files lying with them, so that file histories of each application are available online.

8. The Patent offices should have designated centres to provide assistance to applicants for filing or prosecuting applications.

9. Clear guidelines to be issued for conducting pre-grant and post grant opposition proceedings. Presently they are being handled in an arbitrary manner.

10. In order to introduce an efficient system of patent prosecution, it is recommended that the IPOs adjust patent term to compensate patentees for any delay in the grant of the patent that reduces the term of the patent, when such delay is caused solely by the IPOs.

11. Decision making and its communication to all concerned to be made faster at the IPOs. A system to be instituted for issuing the operative part of the decision first, followed by details of the decision taken. These should be advertised immediately in the technical journal to close proceedings at the earliest. Delays are leading to increase in the waiting period for the grant of patents, even if the proceedings have been concluded (opposition or otherwise) attracting serial and frivolous pre-grant oppositions. Such delays are also preventing the patent applicants to get their grants. As a result they are unable to initiate infringement proceedings against infringers quickly, defeating the very purpose of the patent system.

12. The timeline for an application, which will be taken up for examination, needs to be clearly defined. Currently, there is no time-line defined for taking up the applications for examination.

Conclusion:

All concerned will feel happy, if the DIPP in general and the CGPDTM in particular take note of these suggestions and formalize a process within the IPOs to address these important issues.

Growing discontentment of the past, in several areas of operation within the IPOs, is now being effectively addressed. However, the system still warrants more capacity building to enable the IPOs provide world class services to the patent applicants. This process needs to be expedited to further enhance the credibility of the new IPR regime in India.

By Tapan Ray

Disclaimer: The views/opinions expressed in this article are entirely my own, written in my individual and personal capacity. I do not represent any other person or organization for this opinion.

Simmering discontentment in the functioning of the Indian Patent Office (IPO) – urgent need to tighten the ‘loose knots’ in the system.

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Indian Patent office (IPO) though is headquartered at Kolkata, because of some unknown reason, the office of the Controller General of Patents, Designs and Trade Marks (CGPDTM)is located in Mumbai with other two offices at New Delhi and Chennai. Moreover, the office of the ‘Patent Information System’ is located at Nagpur. Scattered location of the IPO, many believe, could be an impediment in ensuring uniformity in operations between all its units. Such an opinion is debatable though, I shall not deliberate on this issue in this article.The point that I shall argue upon is the crying need in the IPO to tighten 15 identified ‘loose knots’in its operation, which are causing considerable concern within stakeholders, who are casting serious aspersions in its efficiency.There are some areas where our IPO is doing quite well. I shall also dwell upon those areas before highlighting the areas of improvements.

The new IPR regime came into force from January 1, 2005. Even 4 years down the line, the IPO still remains grossly understaffed. Growing dissatisfaction with the current functioning of the IPO is fast sapping initial enthusiasm of the innovators on the new IPR regime in the country. ‘The glass’ now perpetually looks as ‘half empty’, as it were and will continue to do so, if corrective measures are not taken, forthwith.

The information available from the IPO website indicates that all the four centers put together, there are just 134 Examiners, 31 Assistant Controllers, 4 Deputy Controllers and 1 Joint Controller. Staff attrition rate within the IPOs has been reported to be reasonably high, which incidentally appears to be one of the key issues of their inefficiency. These trained IPO personnel are being poached mainly by the private sector enterprises, offering significantly higher remuneration. At the same time, there appears to be 3 times increase in the number of applications filed in the last five years, complicating the situation further.

The silver lining is, despite all these, the performance of IPO quantitatively speaking, is really not as poor. Around 11,000 patents were granted by the IPOs in 2007-08. This number, when translated into average number of patents granted per day, works out to be 50. This figure, when viewed in terms of number of patents granted against the number of applications made, compares reasonably well with the developed nations of the world like, USA and EU. It is worth noting that in those countries the product patent regime is in place, since long.

Indian Patent Act 2005 is believed to be more stringent than the prevailing Patent Acts in the USA or EU. It is good to note that quoting the Department of Industrial Policy and Promotion (DIPP) it has been reported that each Indian Patent Examiner examines about 100 applications per annum against 50 to 80 in the USA and the EU. This is indeed laudable.

Indian Patent Office is currently going through ‘capacity building’ exercises. The efforts being made towards this direction are expected to make the IPOs more efficient, hopefully, in pursuit of excellence.

India has recently been approved as an International Searching and Preliminary Examining Authority under the Patent Cooperation Treaty (PCT). This, in turn, will significantly increase the workload of the IPO.

When we are mentioning about the PCT, perhaps it will not be out of place to say that some section in India argues in favour of the need to include the International Nonproprietary Names (INN) in the title of pharmaceutical patent applications by the IPO. However, as INNs are not required in the title of patent applications under Article 27(1) of the PCT, such a requirement, in my view, could appear to conflict with the PCT.

Thus, it has now become more essential that the Controller General of Patents, Designs and Trade Marks (CGPDTM) tightens the ‘loose knots’ in the IPO system, immediately, to make it efficient and effective.

In this article I shall not go into much debated and discussed, ‘Indian Patent Manual’ issue. I shall only submit the following 15 suggestions towards achieving the above objective:

1. To effectively cope with its growing workload, the Patent office should upgrade its IT facilities and ensure that patent examiners are trained to handle the filing and prosecution of patent applications.

2. Electronic-filing of patent applications has been introduced, but there is no facility of paying the fees online by credit card. This facility should be introduced to make it more convenient for applicants to file patent application online. This will also add speed to the process.

3. Electronic prosecution of patent applications should be introduced to make the patent prosecution paperless and more efficient.

4. To encourage applicants to file applications electronically, incentives such as reduced fees should be offered to applicants who file their applications electronically.

5. The Patent Office has in the past experienced problems in locating and managing physical application files. It is therefore recommended that the Patent Office introduce systems for better management and storage of physical files. Using a system of bar codes on the physical files could be one such system.

6. The Patent Office should digitize all of its physical files so that file histories of each application will be available online.

7. The Indian Patents Database and the Indian Designs Database to be released without further delay.

8. An efficient system to be introduced to ensure timely publication of all patent applications and proceedings that are eligible for publication in the technical journal of the IPO. Currently there is inordinate delay, for example Delhi Patent Office is now publishing applications for 2005

9. Patent applications that are published in the official gazette have minimal information. It is therefore recommended that the official gazette include more details of the applications in order to avoid any frivolous or unnecessary oppositions being filed.

10. The Patent office does not have any centers, which provide assistance to applicants for filing or prosecuting applications. It is therefore recommended that assistance centers should be established to help applicants to file and prosecute applications in India.

11. Clear guidelines to be issued for conducting pre-grant and post grant opposition proceedings. Presently they are being handled in an arbitrary manner

12. In order to avoid any frivolous pre-grant opposition during the prosecution of the application, the Patent Office should introduce a fixed fee that has to be paid to the Patent Office at the time of filing of a pre-grant opposition. This will help to avoid frivolous delays in the grant of the patent.

13. In order to introduce an efficient system of patent prosecution, it is recommended that the Patent Office adjust patent term to compensate patentees for any delay in the grant of the patent that reduces the term of the patent, when such delay is caused solely by the Patent office.

14. Decision making and its communication to all concerned to be made faster at the IPO. A system to be instituted for issuing the operative part of the decision first, followed by details of the decision taken. These should be advertised immediately in the technical journal to close proceedings at the earliest. Delays are leading to extensive delays in the grant of patents even if the proceedings have been concluded (opposition or otherwise) attracting serial and frivolous pre-grant oppositions. Such delays are also preventing the patent applicants to get their grants and are, therefore, unable to initiate infringement proceedings against infringers quickly, defeating the very purpose of the patent and trademark system.

15. The timeline for an application to be taken up for examination to be clearly defined. Currently, there is no time defined for taking up the applications for examination.

It will indeed be great, if the DIPP and the IPO take note of these suggestions and formalize a process within the IPO to address these issues. A growing discontentment in several areas of operation within the IPO is brewing, both in India and abroad. If such discontentment increases further, it may have serious impact on the credibility of the new IPR regime in India.

Will the Government of India want that to happen? I hope not.

By Tapan Ray

Disclaimer: The views/opinions expressed in this article are entirely my own, written in my individual and personal capacity. I do not represent any other person or organization for this opinion.