Review of draft Patent Rules finds faults

By Vidisha Garg, Anand and Anand
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India is again in the process of amending its Patent Rules to bring them in line with the spirit of national intellectual property rights (IPR) policy and the government’s initiatives of “Make in India” and “Start-up India”.

Vidisha Garg Anand and Anand
Vidisha Garg
Partner
Anand and Anand

The Department of Industrial Policy and Promotion (DIPP) unveiled the IPR policy on 13 May 2016 with the objective of nurturing IP culture in the country, and guiding and enabling creators and inventors to realize their potential for generating, protecting and utilizing IP, which would contribute to wealth creation, employment opportunities and business development.

In view of the policy, the Patent Rules, 2003, were extensively amended in 2016 to include new provisions of expedited examination, inclusion of definition of start-ups, and having shorter and stricter timelines. Furthering this, the DIPP on 4 December 2018 published the draft Patent (Amendment) Rules, 2018. The key highlights of the proposed draft are:

  1. All documents for international applications to be submitted online.

    The patent agents are required to file, leave, mark, or give all the documents only by electronic transmission. Original documents such as power of attorney, priority documents, proof of rights, etc., are to be submitted in original within a period of 15 days, failing which they will be deemed not to have been filed.

  2. Expansion of beneficiary list to expedite examination. The 2016 amendment had brought in rule 24C for expediting the examination of patent applications. Applications can be examined faster if an application to this effect is made by the applicant on two grounds, namely: (i) that India has been indicated as the competent international searching authority or international preliminary examining authority in the corresponding international application; and (ii) that the applicant is a startup.

The proposed rules, 2018, aim to expand this coverage to: (i) small entities; (ii) female applicants; (iii) government undertakings; and (iv) an applicant who is eligible under an arrangement for processing an international application pursuant to an agreement between the Indian Patent Office and another participating patent office.

This amendment particularly aims to ratify the recent agreement between the DIPP and the Japan Patent Office (JPO). Both sides have agreed in principle to start a bilateral patent prosecution highway (PPH) programme on a pilot basis in the first quarter of fiscal 2019.

Although the amendment has been appreciated by the public, there is a serious omission in terms of implementation. For example, no proper information is provided as to by whom and how the PPH facility can be used. There is also no provision for refund of expedited examination fees in cases where the applicant’s request for expedited examination is rejected.

  1. Opposition board constituted in case of pre-grant opposition. Rule 55 of the Patents Rule, 2003, which provides the procedure of dealing with pre-grant opposition under section 25(1) of the act, has been amended.

With the objective of expediting the disposal of pre-grant opposition and bringing transparency, the amendment rules propose to insert sub-rule 2A in the principle rule 55 to constitute an “opposition bench” in case of pre-grant opposition. The opposition bench has to be constituted by the controller and shall comprise two members who shall dispose of the application and the representation jointly. In case members of the opposition bench differ on any issue, the controller shall nominate a third member to the bench and the majority decision will be treated as final.

This amendment was criticized for not clearly providing details on the members of the opposition board, whether it will include the same controller and examiner who had examined the application, or if there will be a different controller and examiner.

It will also lead to two parallel procedures, one involving the controller to examine the patent application, and the other involving an opposition bench to provide its findings. These parallel procedures will prolong disposal time, particularly in cases where multiple oppositions are filed.

  1. Additional amendments. The draft Patent (Amendment) Rules, 2018 propose to do away with the transmission fee for filing the PCT International application filed through the e-PCT system. Also, there is a proposal to abolish the fee for preparation of certified copy of priority document and e-transmission through WIPO DAS.

The draft rules clearly reflect the ideology of the DIPP to facilitate the IP creators and owners to boost the “Make in India” initiative.

At the same time it fails to take into consideration the practical aspects of implementation of the proposed amendments. Stakeholders have already submitted comments in respect of the draft rules and very soon the author hopes to receive notification of the final amendment rules. Until such time, fingers are crossed.

Vidisha Garg is a partner at Anand and Anand

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Anand and Anand
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Email: Vidisha@anandandanand.com