Patent laws in the region vary in their effectiveness. Regulations across jurisdictions to crack down on infringers are in a constant state of renewal and revision in order to stay ahead of those who steal intellectual property. Keeping the trolls at bay depends on staying abreast of regional developments in patent law
In the year 2016, two major developments were set in motion by the Indian government- the National IPR Policy, approved on the 12th of May and the Patents (Amendment) Rules, 2016, which came into effect on the 16th of May. While the former clarified India’s policy position on a number of substantive provisions relating to patent law, the latter sought to improve the procedural framework with respect to patent examination, grant and opposition. The notable aspects of each of these are analysed below.
The national IPR policy 2016
The mission statement of this policy seems to envision a balance between fostering innovation and protecting public interest considerations such as access to healthcare, food security and environmental protection.
The policy also puts down seven objectives including: promoting IPR awareness; stimulating IPR generation; ensuring a strong legislative framework that balances the interests of the right owners with the larger public interest; modernizing and strengthening the IPR administration; encouraging the commercialization of IPR; and strengthening the adjudication and enforcement mechanisms against infringement and developing human resources, institutions and capacities within the IP field.
However, the policy has drawn flak for refusing to change the Indian position on certain issues of global interest such as compulsory licensing, and section 3(d) of the Patents Act, which bars the patentability of new forms of a known substance unless there is a significant difference in the efficacy.
For instance, the policy seeks to “continue to utilise the legislative space and flexibilities available in international treaties and the TRIPS [Trade-Related Aspects of Intellectual Property Rights] Agreement”, which has been widely construed to be a reference to compulsory licensing. The global response to India’s stance on this issue has not been welcoming. In fact, in April 2017, the office of the US Trade Representative placed India on its Intellectual Property Priority Watchlist “for lack of sufficient measurable improvements to its IP framework on longstanding challenges and new issues that have negatively affected US right holders over the past year, particularly with respect to patents, copyrights, trade secrets and enforcement.”
While it was reported that India had tried to assuage concerns on its compulsory licensing issues by giving private assurances to the US in early 2016, the Ministry of Commerce and Industry, through a press release on 22 March 2016, officially reiterated its right to grant such licences in accordance with the Doha Declaration and the TRIPS Agreement.
Notwithstanding this, the policy has also brought in some improvements to the patent regime. One such step is the facilitation of IPR generation by start-ups. This has been done through the creation of a Start-ups Intellectual Property Protection Scheme (SIPP) which was launched in January 2016.
In conjunction with this, the Patent (Amendment) Rules, 2016 also has provisions relating to the process of patent approvals for start-ups.
Another significant area of improvement is the objective of modernizing the administrative set-up surrounding patents. A notable advancement with respect to this was brought out in February 2015 through the launch of the Indian Patent Advanced Search System (InPASS) by the Indian Patent Office.
This new system allows for advanced patent searches to be performed on the basis of fields such as title, claims, abstract, application number, patent number, description, field of invention, inventor name, inventor address,
applicant name, filing office, and PCT (Patent Co-operation Treaty) application number.
Patents (Amendment) Rules 2016
The important changes effected by the rules include:
- Provisions regarding start-ups. The rules seek to facilitate IPR generation by start-ups in consonance with the objectives of the National IPR Policy. It begins by introducing the term “start-ups” and defining them in Rule 2(fb). “Start-up means an entity, where: (i) more than five years have not lapsed from the date of its incorporation or registration; (ii) the turnover for any of the financial years, out of the above-mentioned five years, did not exceed rupees 25 crores; and (iii) it is working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property, provided that any such entity formed by splitting up or reconstruction of a business already in existence must not be considered as a start-up. Provided further that the mere act of developing: (a) products or services or processes that do not have potential for commercialisation; (b) undifferentiated products or services or processes; or (c) products or services or processes with no or limited incremental value for customers or workflow; would not be covered under this definition.” Start-ups get advantages under the rules including the ability to apply for an expedited examination as well as reduced fees for procedures such as filing, request for expedited examination and applications for compulsory licensing.
- Expedited examination. An applicant can now request an expedited examination of the application “only by electronic transmission and duly authenticated within 48 months from the date of priority on any one of the following grounds: (i) India has been made as the competent international searching authority or international preliminary examining authority in the corresponding International Application; or (ii) the applicant is a start-up.” Under this process, the maximum time that may be taken for issuance of the First Examination Report is three-and-a-half months.
- Hearing. The rules allow hearings to take place over audio-visual communication as well as video conferencing. Moreover, adjournments may not be sought more than twice, and each such adjournment cannot be longer than 30 days.
- Power of attorney. The rules have introduced a deadline of three months for the filing of power of attorney without which the application will not be processed any further. This is another provision that is part of the scheme of expediting the administrative delays in the patent approval process.
- Reduced time for putting the application in order for grant. The amended rules have reduced the timeline for putting an application in order for grant, from 12 months to six months. However, a request for an extension of up to three months may be made to the controller before the expiry of this six-month period.
- Mandatory e-filing. The rules also mandate the filing of patent applications as well as subsequent filings to be done through the comprehensive e-filing portal. This has made the process a lot faster and more convenient. The government has also taken steps to actively incentivise e-filing by reducing the fees for the same. The reduced fees may be found in a tabular form in the first schedule to the rules.
This increase in online operations of the Patent Office has also resulted in greater transparency with the file wrappers and documents being made available online, on the IPO website.
- Provisions regarding fees. The rules, as per rule 7 (4A), allow a 90% refund of the fee for request of examination to be claimed if the applicant submits a withdrawal application before the issuance of the first examination report.
Additionally, there is a provision governing the full or partial transfer of the patent application from a start-up to anyone, other than another start-up or natural person. This states that the difference in the scale of fees (keeping in mind the reduced fee for start-ups) must be paid by the said transferee.
There has clearly been a mixed bag of developments in the field of patent law in India. While the government has remained adamant in the face of global pressure to back down on issues such as compulsory licensing and Section 3(d), there has also been an increased conformity with global trends on procedural requirements with respect to filing, examination and grant of patents.
Anand and Anand
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