Vide Custom Notification dated 22nd June, 2018 , the government of India, amended the IPR (Imported goods) Enforcement Rules 2007. In the amendment, the words “patents as defined in the Patents Act, 1970” appearing in Rule 2 (b) and “the Patents Act,1970” appearing in Rule 2(c) have been omitted. This reduces the burden of custom authorities with examining patent infringement.
Recognizing AI’s potential to transform economies and the need for India to strategize its approach, Hon’ble Finance Minister, in his budget speech for 2018 – 2019, mandated NITI Aayog to establish the National Program on AI, with a view to guiding the research and development in new and emerging technologies. The paper was released on 4th June, 2018.
NITI Aayog has adopted a three-pronged approach – undertaking exploratory proof-of-concept AI projects in various areas, crafting a national strategy for building a vibrant AI ecosystem in India and collaborating with various experts and stakeholders.
This paper focuses on how India can leverage the transformative technologies to ensure social and inclusive growth in line with the development philosophy of the government and lay the ground work for evolving the National Strategy for Artificial Intelligence.
The AI ecosystem is essentially based on 5 pillars: policy makers, large companies, startups, universities and multi-stakeholder partnerships.
India’s approach to AI:
The strategy should strive to leverage AI for economic growth, social development and inclusive growth, and finally as a “Garage” for emerging and developing economies. NITI Aayog has decided to focus on five sectors that are envisioned to benefit the most from AI in solving societal needs:
- Healthcare: increased access and affordability of quality healthcare,
- Agriculture: enhanced farmers’ income, increased farm productivity and reduction of wastage,
- Education: improved access and quality of education,
- Smart Cities and Infrastructure: efficient and connectivity for the burgeoning urban population,and
- Smart Mobility and Transportation: smarter and safer modes of transportation and better traffic and congestion problems.
The report identifies the following barriers that are posed before India which need to be addressed in order to achieve the goals of #AIforAll:
- Lack of broad based expertise in research and application of AI,
- Absence of enabling data ecosystems – access to intelligent data,
- High resource cost and low awareness for adoption of AI,
- Privacy and security, including a lack of formal regulations around anonymisation of data, and
- Absence of collaborative approach to adoption and application of AI.
The paper proposes a two-tiered structure to address India’s AI research aspirations:
Further, data is one of the primary drivers of AI solutions, and thus appropriate handling of data, ensuring privacy and security is of prime importance. Challenges include data usage without consent, risk of identification of individuals through data, data selection bias and the resulting discrimination of AI models, and asymmetry in data aggregation. The paper suggests establishing data protection frameworks and sectorial regulatory frameworks, and promotion of adoption of international standards. In order for India to ride the AI innovation wave, a robust intellectual property framework is required.
Synergy of IP laws and AI:
Despite a number of government initiatives in strengthening the IP regime, challenges remain, especially in respect of applying stringent and narrowly focused patent laws to AI applications – given the unique nature of AI solution development. To tackle these issues, establishment of IP facilitation centers to help bridge the gap between practitioners and AI developers, and adequate training of IP granting authorities, judiciary and tribunals has been suggested.
AI and the world:
There has been tremendous activity concerning AI policy in different countries over the past couple of years. Governments in USA, UK, France, Japan and China have released their policy and strategy papers relating to AI. AI has the potential to provide large incremental value to a wide range of sectors globally, and is expected to be the key source of competitive advantage for firms.
Paradigm of AI:
An unrelated but interesting paradigm for AI application is the “AI + X” approach. Deployment can be viewed through the paradigm of “take an existing process, and add AI” or “AI + X”; where “X” can range from tasks such as driving a car, where AI can provide incremental value through improved routing and energy management, to act of sowing seeds, where AI can help inform decision making and improve productivity.
Key Challenges: Sector Wise
The preceding analysis of focus sectors – Healthcare, Agriculture, Education, Smart Cities and Infrastructure, and Smart Mobility and Transport, highlight the potential of AI tools and technologies in transforming the sectors and state of Indian economy as a whole.
However, analyzing across the focus sectors, the challenges are concentrated across the following common themes:
- Lack of enabling data ecosystems
- Low intensity of AI research
- Core research in fundamental technologies
- Transforming core research into market applications
- Inadequate availability of AI expertise, manpower and skilling opportunities
- High resource cost and low awareness for adopting AI in business processes
- Unclear privacy, security and ethical regulations
- Unattractive Intellectual Property regime to incentivize research and adoption of AI
- Turbocharging both core and applied research. In addition, two frameworks for solving some of AI’s biggest research challenges through collaborative, market oriented approach have been proposed.
- Reskilling of existing workforce and preparing students for developing applied set of skills for the changing world of technology.
- In order to address these challenges one may focus on developing large foundational annotated data sets to democratize data and multi-stakeholder marketplaces across the AI value chain (data, annotated data and AI models).
- Lay down the challenges and suggestion for addressing some of these not so straightforward implementational challenges of AI.
- Re-skiiling of the current workforce; Recognition and standardisation of informal training institutions; Creation of open platforms for learning; Creating financial incentives for reskilling of employees;
- Indian education is in urgent need of transition particularly in subjects relevant to STEM, or computer based education and hence the implementation of AI.
- The major market segments for the increased AI adoption are:
(a) Private enterprises: mostly driven by market and enterprise considerations,
(b) Public Sector Undertakings: imperative to drive up the operational efficiency of PSUs, and
(c) Government: improve process efficiency, reduce human discretion, eliminate middlemen, advance prediction, pro-active and predictive service delivery to citizens.
Initiatives on promoting and adoption of AI in India:
- Creating a multi-stakeholder Marketplace
- Facilitating creation of large foundational annotated data sets
- Partnerships and collaboration
- Spreading awareness on the advantages AI offers
- Supporting startups
Ethics and AI:
One of the most tricky situation in implementing AI would revolved around privacy, ethics, fairness and tackling the biases in AI which would also include issues of transparency and opening the “Black Box”.
Government has notified an ordinance on May 3, 2018 to amend the Commercial Courts, Commercial Division and the Commercial Appellate Division in High Courts Act of 2015. The main Highlights of the Ordinance are:-
- The pecuniary jurisdiction of the Commercial Courts’ has been widened. The value of subject matter of suit shall not be less than 3 lakhs in place of Rs. 1 crore.
- With respect to the High Courts having ordinary original civil jurisdiction, the State Government may, after consultation with the concerned High Court, by notification, constitute Commercial Courts at the District Judge level.
- With respect to a territory over which the High Courts have ordinary original civil jurisdiction, the State Government may, by notification, specify such pecuniary value which shall not be less than three lakh rupees and not more than the pecuniary-jurisdiction exercisable by the District Courts, as it may, consider necessary.
- Except the territories over which the High Courts have ordinary original civil jurisdiction, the State Government may, after consultation with the concerned High Court, by notification, designate such number of Commercial Appellate Courts at District Judge level, as it may deem necessary, for the purposes of exercising the jurisdiction and powers conferred on those Courts under this Act
- A suit, which does not contemplate any urgent interim relief under the Act, shall not be instituted unless the plaintiff exhausts the remedy of pre-institution mediation in accordance with such manner and procedure as may be prescribed by rules made by the Central Government.
- lf the parties to the commercial dispute arrive at a settlement, the same shall be reduced into writing and shall be signed by the parties to the dispute and the mediator
- The appeals from the judgments and orders of such ‘Commercial Division’ shall lie before the Commercial Appellate Division of the concerned high court
- Any person aggrieved by the judgment or order of a Commercial Court below the level of a District Judge may appeal to the Commercial Appellate Court within a period of sixty days from the date of judgment or order.
- The ordinance also inserts a new provision empowering the Central government to lay down rules for implementation of the Act
As per a recent notice issued by the Office of Controller General of Patents, Designs and Trademarks (CGPDTM), the Patent Agent Examination is likely to be conducted before December, 2018. Detailed information will be made available on official website http://www.ipindia.nic.in after finalization of schedule and other official requirements.
A Public Interest Litigation (PIL) was filed at the Delhi High Court under Article 226 of Indian Constitution as a writ of mandamus (Shamnad Basheer Vs. Union of India (UOI) & Others) seeking directions for the Union of India (UOI) to perform their statutory duty to enforce norms relating to “working” of patents under Section 146 read with Rule 131 of the Patents Act.
The Court had, vide an order dated 15th March, 2018, directed the union of India to place before the Court a reasonable timeline within which amendments as may be deemed necessary for strict implementation of the working statement requirement be effected with the consultation of stakeholders.
A Stakeholder consultation meeting in this regard has already taken place at Delhi, on 6th of April 2018. The UOI has proposed approximately 11 months to have any proposed amendment notified in the Form (Form 27) and the rules.
The proposed timelines by the Union were accepted by the court and the writ Petition has been disposed off vide an order dated 23rd April 2018. The ministry was also directed to make every effort to ensure that there is no deviation in the same and the matter is treated in right earnest and given the seriousness which it deserves to be accorded to it.
The Hon’ble High Court of Delhi in a recent order in a writ petition held that where an Indian National Phase Application has been filed prior to the Patent [Amendment] Rules, 2016, the unamended Rule 138 shall be invoked and not the amended Rule 138. It is pertinent to mention here that the amended Rule 138 incorporates Rule 20(4)(i) as an exception i.e. the amended Rule 138 cannot be invoked by the Controller to condone any delay in filing national phase application.
The Court further held that prior to the amendment of Rule 138 applications for extensions or condonation of delay sought under the 2003 Rules, were treated, as an irregularity under Rule 137.
The Court has held that where a request for examination of the patent application has been made before the expiry of the prescribed time period and is returned only for the reason that the fees is not paid in the prescribed mode and manner and such order has been complied by the petitioner. The request shall be deemed to have been filed within the prescribed time period.
In the instant case, the petitioner filed an application for grant of patent in India corresponding to PCT/FR/2014/050623. The petitioner entered the Indian National Phase on 06th November, 2015 while the prescribed time period of 31 months for filing the Indian National Phase Application ended on 20th October, 2015. In light of delay the petitioner filed petitions under rule 137 and 138.
The first issue to be adjucated by the Hon’ble Court was whether the sustainability of application filed on behalf of the petitioner to enter the Indian National Phase under Rule 20(4((i) of the Patent Rules would be examined in light of amended as against unamended Rules.
The amended rule 138 confers power on the Controller to extend time period for a period of one month for condoning the delay in doing any act or taken any proceedings, provided such request is filed prior to the expiry of the prescribed time period. The amended Rule 138 excludes certain deadlines that cannot be condoned under said rule, one of such deadline being rule 20(4)(i) which stipulates time period for filing National Phase Application as being 31 months.
The difference between amended and unamended rule 138 is that the unamended rule 138 does not exclude rule 20(4)(i). The court held that since the National phase application was filed by the petitioner prior to the Patent [Amendment] Rules, 2016, the unamended rule 138 shall be invoked and the Controller has powers to condone delay in filing the National Phase Application within the prescribed time period. Therefore in such case an irregularity for which there is no special provision in the Act can be corrected under Rule 137. Rule 137 confers powers to the Controller to correct any irregularity in procedure. It is for this reason that the petitioner has filed petitions both under rule 137 and 138.
The second issue adjucated by the Court was whether the Controller ought to have processed the request made by the petitioner for examination once the requisite fee was paid by it in the prescribed mode.
In this case the request for examination was filed by the petitioner along with a prescribed fee in the form of banker’s cheque. The Controller rejected said request on the ground that the same was not made in the prescribed mode and manner. The Act requires the Applicant to pay fees only be paid via Demand Draft/ Banker’s Cheque or Cash and transmitted via electronic mode. This communication asking the petitioner to pay the fees by correct mode reached the petitioner only after the expiry of due date of filing the request for examination and the petitioner thereafter within a matter of less than a week paid the fees via the prescribed manner and mode. The Controller rejected the request again on the pretext that the subsequent payment was received after the stipulated time period. The Court held that the Controller erred in rejecting the request for examination for failure of complying with the statutory time limit of 48 months, for the reason that the request was actually made before the expiry of said time limit and was only returned for the reason that the fees was not paid in the prescribed mode and manner. Further, since the first communication rejecting the request was received by the petitioner only after the expiry of stipulated timer period, steps to correct the same could only be taken thereafter. As a result, the Court directed the Controller to take request for examination on record and process the same in accordance with the Act.
In a recent decision, Asstt. Controller of Patents and design, Dr. Rachna Yadav has held that a post grant Opposition filed at the Indian Patent office on or before the expiry of one year of publication of grant under section 43(2) is maintainable.
Two Oppositions were filed on 30.03.2017 and 31.03.2017 by the Opponents, Shantha Biotechnics Private Limited and Biological E. Limited, respectively, under Section 25(2) of the Patents Act against Panacea’s Patent number IN272351. On 5th April, 2017, the Patentee was served with a copy of the notice of opposition and evidence by courier service, by e-mail on 27th April 2017 and by speed post on 1st May 2017 (agent of Patentee) and 2nd May 2017 (Patentee).
The Patentee filed an Interlocutory petition that the opposition is not maintainable as the Patentee has been served with the post grant opposition by email as well as speed-post by letters dated 28th April, 2017 which are beyond the prescribed time.
The Controller noted that section 25 (2) requires that a post grant opposition be filed at the Indian Patent Office on or before the expiry of one year of publication under section 43(2) i.e., before 1st April 2017. The same has been done in the present case.
Further, the Controller held that the Patentee has admitted to the fact that the copy of Opposition (including written statement, evidence and notice) was received on 5th April 2017 by courier, and later by e-mail and speed post. The Controller held that the Patentee has admitted that they have received the Opposition, by not one but several modes and the opposition has been timely filed at the Indian Patent Office as per the timeline of Section 25(2), the opposition is therefore maintainable.