Working of Patents being reviewed by the DHC

The Delhi High Court (DHC) is currently hearing a Writ petition related to working of patents in India and in an interim order has observed that there appears to be non-compliance issues with respect to this highly debated provision.

Section 146, Rule 131 of the Patent Act empowers the Controller General of Patents, Designs, Trademarks and Geographical Indications (CGPTM office) to call for information in a format set out in Form-27 prescribed under the Patents Rules, 2003 regarding the working of Patents in India. Failure to comply with the statutory requirement invites penalties and criminal action under Section 122 of the Patent Act which includes imposition of fine as well as initiation of criminal proceedings.

Some major Court observations are as follows:-

  • PATENTEE NON COMPLIANCE: The Annual Report 2012-13 of the CGPTM Office indicates failure of several patentees to conform to the requirements of even submission of statements of working and also that very few patents are actually worked.

“(i) Working of Patents (under Section 146): The Patent Office received 27946 Form 27 during the reporting year, of which 6201 were shown to be working.

 

  2009-10 2010-11 2011-12 2012-13
Patents in force 37334 39594 39989 43920
Form-27 received 24009 34112 27825 27946
Reported as working 4189 6777 7431 6201”
  • LICENSEE NON COMPLIANCE: The Patent Act makes it mandatory not just for patentees but also licensees to submit statements of working, however no such information with regard to the licensees are published in the Annual report of the CGPTM office. A glaring observation is that there is non-compliance of the requirement even is case of patents where a compulsory licence has been granted. The vital case of Bayer vs NATCO which led to the first CL being granted in India to M/s NATCO Pharma also does not have any submission by the Licensee which has further repercussions such as withdrawal of the CL.

  • CG OFFICE IN ACTION: The DH Court also observed that CGPTM office are not taking any action for notional or incomplete compliance with the provisions related to this Section 146 of the Act.

The court clearly stated that- “The license holders are also required to file the information in Form-27 as a patentee.” Further, the details of the licenses and sublicenses certainly cannot be termed “confidential” and  therefore, the Patents Office has to treat such suppression as failure to comply with the requirements under the Patent Act, 1970 and to take action against those who have thus failed. There can be no exemption from statutory compliance and that in case any query in the prescribed Form could not be complied with, the person submitting the Form need to state so.

The Court also directed the CGPTM office to submit the status of the amendment of the rules and the action which was earlier proposed with respect to the statement of working.

With the 31st March annual due date for submitting the working statement for the last financial year is approaching, the Patentees and License holders should be careful in preparing and submitting information regarding working amidst the above developments.

 

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IPO as ISA – the progress so far

The Indian Patent office (IPO) has published an update on India’s progress as an international searching authority. As per the report, the number of Applicants choosing India as a searching authority is on a rise. From 123 in 2013, the count rose to 711 in the year 2015-16 and 940 in 2016-17. (Period from 31st March to 1st April).

In fact, more than 50% of Indian Applicants in year’s 2015-16 and 2016-17 have chosen India as the searching authority. The reason for this steep increase could be reduced cost, or the availability of the option of applying for expedited examination of the Indian National phase application. Applicants choosing India as the searching authority (ISA) or IPEA are eligible for expedited examination of corresponding national phase application in India. The examination report in such cases are being issued within 2 months from date of request of expedited examination and the final decision in respect of the application is taken within three months from date of reply by the Applicant.

 

Mobile App for intellectual property rights

Office of Controller General of Patents, Designs & Trade Marks has launched the official Mobile APP for intellectual property rights. The application can be downloaded from Intellectual Property India website, www.ipindia.nic.in or from Google playstore.

The application is an information dissemination tool of the Office of Controller General of Patents, Designs & Trade Marks. The current version includes the information with respect to : Patents Office, Designs Wing of Patent Office, Trade Marks Registry, Geographical Indications Registry, Copyright office, Semiconductor Integrated Circuits Layout-Design Registry & Rajiv Gandhi National Institute of Intellectual Property Management. The Application provides various tools to know about the Application status, Patent & Trade Mark register, relevant Acts & Rules etc.

IPR Exchange

The federation of Indian Micro, Small and Medium Enterprise (FISME), with support of the prosperity fund through British High Commission in India, have established and IPR Exchange , an online platform for commercial exchange of Intellectual property rights (IPR) (http://www.iprexchange.in/index.php). It is a platform for buying, selling & licensing IPRs.

As per the website “IPR Exchange seeks to alleviate these problems and create an efficient trading platform for buyers and sellers of intellectual property rights.” Essentially, the market for IP continues to suffer from illiquidity, high transaction costs, a lack of price discovery, and other information asymmetries and IPR Exchange seeks to solve the same.

The inbuilt online IPR management tool in the exchange keeps record of  IPR instruments of the users and sends them reminders/ alerts and therefore helps manage IP. The platforms serves not only to identify and manage IP, but also provides various additional services:-

  • P Audits: Conducting IP Audits  to help identify IP assets in MSMEs
  • IP Valuation: Valuation of  IP assets of MSMEs by a panel of IP Experts
  • IP Management:  a unique  net-based IP management system for management of IP assets of MSMEs
  • Technical Landscaping:  Special technical research reports for Technology mapping and scoping for specific sectors and products
  • Legal Agreements:  Assistance in drafting legal agreement for technology transfer, franchising, licencing etc.

The simple steps for exchange of IP using the platform are provided on the website as follows: —

If you are a seller

  • Get your IP protected and acquire rights for : Patent, Copyrights, Trademarks, Designs  etc,
  • Register with IPREXCHANGE.IN, fill details of your IP
  • Specify whether you would like to sell the IPR rights outright or  you would like to licence it or give franchising rights etc.

If you are looking for technologies or buying IPRs:

  • Register your details
  • Search as per your interest: product/ sector specific offers; read the details of offers
  • Negotiate and strike a deal

 

Initiatives by the CGPDTM office

The Controller General of Patents Design and Trademarks (CGPDTM) office is taking various measures to make the system of the patent office more user friendly and transparent. Two steps taken in this regards are :

  1. SMS alert facility for patent applications has been operationalized – The CGPDTM has started the SMS alert facility for Applicants and Agents whereby they will receive alert informing them the progress of applications at various stages of processing. The alerts will also be indicating  timelines and non-compliance which may lead to refusal/abandonment of applications. The updates would be sent on the mobile numbers provided in the address for service.
  2. Publication of Examination reports generated – CGPDTM will publish in the weekly official journal of the Patent Office, the details of the First Examination Reports (FER) generated.

This is indeed a commendable step towards streamlining the processes especially when the of FERs issued every month is significantly higher than ever in the past. For reference, Journal dated 27th October, 2017   shows reports for the week of 16th October 2017.

WIPO AND IPO Collaborate

Controller General of Patent Design and Trademark and Director General of World Intellectual Property Office (WIPO) have signed Cooperation agreement on 5th October 2017 at Geneva Switzerland to facilitate the exchange of data between these offices including Indian Patent documents , search and examination reports through WIPO CASE and WIPO Digital Access Services (DAS) to make priority documents available electronically.

The agreement also envisages the regular data exchange between WIPO and Indian Patent Office (IPO).