Stay tuned for detailed analysis of the order!
The Petitioner sought quashing of the “deemed to be withdrawn” status of the application No. 5272/DELNP/2008 under section 11B and sought restoration of the said application and for proceeding further with the same. The Petitioner also sought direction to the respondents to correct the clerical/typographical error in the number of the Patent application in request for examination and other documents to read as 5272/DELNP/2008 instead of 6272/DELNP/2008.
According to the Delhi High Court (DHC) (M_S._Iritech_Inc_vs_The_Controller_Of_Patents_on_20_April,_2017 ), applicants can correct inadvertent errors, provided that they are fixed in time. It was held that –
“when the error in Form 18 was an apparent clerical error… and… the request for examination was filed within the 48-month period and even the request for correction of the clerical error was made prior to the expiry of the period of 48 months and prior to the application for grant of patent being deemed to have been withdrawn… the action of the Respondents in deeming the Indian National Phase application No. 5272/DELNP/2008 as deemed to be withdrawn, is set aside.“
The court interpreted the provisions of Section 78 relating to the power of the controller to correct the clerical error and held that:
“Section 78 of the Act, inter-alia, empowers the controller to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register. The correction can be made either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.”
The ruling further states that –
“Since there is no form prescribed by the Act or the Rules for seeking correction under Section 78 of the Act, even a letter would be sufficient. The petitioner along with the letter had enclosed the corrected Form 18 and the corrected covering letter. The request was made prior to the expiry of the period of 48 months. The requisite fee was also paid thereon. There is no reason as to why the Respondents should not have considered the same.”
In view of this, The “Deemed to be withdrawn” status of the application was accordingly quashed.
Indian Patent Office (IPO) has now started granting patents under expedited examination system (Rule 24C of the Patent Amendments Rule 2016) within 9 to 12 months.
One such patent granted is IN2885091 for “A PROCESS FOR THE PREPARATION OF APIXABAN“. A request for expedited examination was filed on 24th October 2016 and the same was converted into an expedited request on 21st March 2017. A patent has been granted to Optimus Drugs Private Limited within 9 months of filing of request for examination and 4 months of converting it into an expedited request, on 12th July 2017. The other factual details are as follows:-
- Request for examination: 24th October 2016
- Request for expedited examination: 21st March 2017
- First Examination report issued on: 31st March 2017
- Response to examination report filed on: 4th May 2017
- Hearing attended: 23rd June 2017
- Written submissions filed: 3rd July 2017
The IPO has allowed claims directed to method of removal of hair considering such method to be a cosmetic method resulting only in improvement of the appearance of the skin. The claimed method was considered as not resulting in treatment or enhancement of economic value of the subject as compared to the conventional methods, therefore not falling within the ambit of section 3(i). The order can be found here.
New CRI Guidelines Introduced
The patentability requirements and examination criteria for computer related inventions has been under scrutiny in major jurisdictions of the world. Considering the special nature of this ever evolving field there have been discussions and changes as well as interpretations of legislation on how best to protect this fast-paced innovation where each invention has a short life. The advent of AI, big data and internet of things has further brought new challenges into the forefront requiring clarity of how to apply the law and protection mechanisms to inventions in these high tech fields. The latest guidelines released by the IPO are a forward and welcome step in this direction.
Initiatives by the IPO
In India specifically, there has been increasing interest in both software products and services. There has been growth in the industry as well as the market for ICT products. The Indian ICT sector has several Indian as well as MNC R&D Innovation centres and is a hot bed of innovations. Consequently, this has led to an increase in patent filings and has resulted in initiatives by the IPO in the form of examination guidelines for CRI. In the past few years these have gone through a lot of changes.
The guidance for examining software related inventions were first introduced in the ‘Manual for Patent Practice and Procedure’ in 2005. It underwent several changes in different versions of this manual released thereafter in 2008, 2010 and 2011. In 2013, a separate draft set of guidelines apart from the manual was released dedicated only to the examination of computer related inventions. These were revised in 2015, but were soon put in abeyance with a new set replacing them in early 2016. However these seem to have been released under pressure since the SFLC had written a letter directly to the PMO complaining about the “unfair” protection offered under the 2015 guidelines. These guidelines could not hold water since they were against the legislative intent and had been formed without giving much thought. Since then, after extensive deliberations and several stakeholder meetings, the latest guidelines have recently been released on 30th June 2017 .
The guidelines of 2016 had placed the presence of “novel hardware” as a patentability requirement for software related inventions. One of the major changes brought about in the latest version is that this requirement has been removed as it was clearly against the intention of the legislature. Apart from that all examples of non-patentable inventions which were earlier given have been removed. It has also been clarified that systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications shall not be regarded as mathematical methods and shall be considered patentable
What Remains the Same
As before, the guidelines focus on the substance of the claims over the form in which they have been worded. They also direct that for means + function claims, the means are to be defined with physical constructional features along with reference numerals to enhance the intelligibility of the claims. The structural features of those means are also to be disclosed in the specification. Guidelines for algorithms and business methods are also retained as is
Scope for More
However, technical effect and technical advancement have not been defined and neither have these terms explicitly been mentioned as patentability criteria. Suitable examples would have also been beneficial to aid understanding and clearly differentiate between what is patentable and what is not
From January to June the IPO has disposed off 19 oppositions. Out of the 19 decisions, three are in relation to post grant oppositions and the remaining 16 are in respect of pre grant oppositions.
Out of the 16 decisions rendered in pre-grant oppositions, in nine cases either the applicant abandoned the case or the opposition was withdrawn. Similarly, out of the three decisions rendered in post-grant oppositions, in one case the applicant abandoned the case. For details see Jan-June 2017.
For summary of the remaining 9 decisions (7 pre-grant and 2 post grant), wherein the Opposition grounds and Applicants/patentees submissions have been discussed in detail in the decision, refer: Pre grant Decisions Jan-June 2017and Post grant Opposition decision – Jan to June 2017 .
The process relating to issuance of Patent certificates has been fully automated by the Indian Patent Office.
As per the notification of the Patent office, from 3rd July 2017 the patent certificates will be generated through an automated system after the patent is granted by the Controller and shall be made available to the applicants concerned or their authorized patent agents on record. The patent certificate so generated will be transmitted to the applicant concerned or his authorised patent agent on record on his email address recorded and would also be made available on the official website (www.ipindia.gov.in) along with status of the application concerned.