The administrative machinery through which IP rights are granted and maintained is as important as the statute which governs the system. As a result, the efficiency of a country’s IP law is often measured by the functioning of its IP office.
Functional inefficiencies of the Indian patent office have until now acted as roadblocks hindering the development and practice of IP law in the country. The escalation of patent filings and the increasing number of multinational firms looking towards India with regard to protection of their clients’ IP have provided compelling reasons to address and rectify these problems. That work of improvement recently began, with major changes introduced to the administration of the office soon after the accession of its new controller general, PH Kurien.
Changes in operation
The changes include a streamlining of procedures for applications and oppositions, and the classification and grouping of examiners and controllers in relation to the subject areas being dealt with. The examiners have now been divided into four subject-specific groups: chemistry and allied sciences, biotechnology and microbiology, mechanical and allied sciences, and electrical, electronic and allied subjects. This has been done to ensure that applications reach the persons who are best qualified to examine them.
The controller is now required to sign the examination report under section 144, to ensure compliance with the norms of patent practice. Guidelines have been issued to regularize the publication of applications and the timely handling of oppositions, as well as reinforcing the requirement for patent office staff and procedures to follow international patent classification systems.
An oft-cited reason for the patent office’s lack of efficiency has been delay in the processing of applications. One step taken to redress this is the permitting of the use of electronic communication (email) in respect of notices and examination reports to patent agents and applicants. This step was a long-felt need expressed by patent stakeholders at various forums, including at the meeting of the fifth Consultative Working Group on Patents, Designs and Trademarks in India held in April, organized by the Federation of India Chambers of Commerce and Industry.
Notice and reports can now be sent to the email addresses provided by correspondents in accordance with the provisions of rule 6 of the Patents Rules 2003. The introduction of electronic communications will reduce physical clutter in the patents office, increase the speed of processing and facilitate easy storage and access of information. One likely benefit is that the abandonment of applications which sometimes occurred as a result of excessive processing delay can now be prevented.
The detailed manual of patent office procedures, released by the patent office with effect from 1 July, also discusses the digitization of patent applications (and any amendments filed), which can then be made accessible to the public. The manual further provides for the screening and classification of applications and verification of data at various levels, in order to address quality control concerns by maintaining and fixing responsibility for accuracy. Public access to applications and amendments will enable tracking of the status of an application, and also facilitate direct prior art searches of the filed documents, which were not possible until now.
Information relating to the working of patents, filed in Form 27, will also be made publicly accessible through the Patent Office Journal. This step is hailed by stakeholders who wish to obtain compulsory licences for inventions, as they will now be able to obtain the information relating to working of the patent from the journal itself. Access is limited to authorized patent and trademark agents, with an ID card system to be established.
Transparency and integrity
Other changes include the requirement that examiners declare whether any of their relatives are IP practitioners, in order to avoid situations of conflict of interest. Regular memos and circulars are issued regarding acceptable office and workload management practices. Examiners are regularly reassigned from one office within the organization to another, with the aim of ensuring that no official remains in a position long enough to give any opportunity for corrupt practices to arise. These administrative measures are being taken to increase transparency in the patent prosecution system, expedite the process of patent granting and bring the functioning of the patent office into line with international standards. In turn, these outcomes should see an increase in confidence among patent industry stakeholders.
Notwithstanding these reforms, some problems are still being caused by the continuing shortage of patent office staff, which results in high workload and low incentives for individual staff members. This issue needs to be promptly addressed in order to ensure that the positive administrative changes that have been made begin to show the intended results.
Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual property issues.
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