Indian Patent office (IPO) has started the WIPO Digital Access Service (DAS) with effect from 31/01/ 2018 for priority documents submitted by the applicants from the participating Patent offices under the WIPO–INDIA Cooperation agreement.
WIPO Digital Access Service (DAS) facilitates easy, secure, quick and inexpensive procedure for submission of certified copies of Priority documents: Some of the salient features of WIPO DAS as available on the Indian Patent office website are as under;
• Applicants can simply request the office of first filing to deposit/add the priority document into the WIPO DAS system, and request offices of second filing to use the service for obtaining access of such documents.
• Use of an access code provided by WIPO DAS to authorize access;
• Documents are exchanged via secure channels;
• The DAS Service is hosted and administered by WIP0.
• No need to provide a certified copy of a priority document separately to each office of second filing.
• No need to pay for multiple copies of paper priority documents;
Accordingly, IPO as a depositing Office will now upload certified copies of patent and industrial design applications as priority documents, including International Patent applications under PCT filed at the Office (RO/IN) filed on and after 31/ 01/ 2018, which the applicant specifically requests to make such priority documents available to the WIPO DAS.
Sphaera Pharma, Pte.’s, writ petition, seeking to restore the Indian Patent Application No. 3584/DELNP/2015 has been dismissed by the Delhi High Court. Earlier, the Petitioner had failed to file the request for examination within the prescribed time i.e. within a period of 48 months from the priority date (on or before 05.10.2016) and this resulted in abandonment of the application under Section 11B. The petitioner filed a petition at the IPO, requesting that the status of its Indian Patent Application be reviewed. However, the same was not considered by the IPO.
Aggrieved, the petitioner filed the present Writ petition. The Court held that it is apparent from the language of Section 11B (1) of the Patents Act that consideration of any application for examination beyond the stipulated period is not prescribed. The Court held that a plain reading of Section 11B(1) of the Patents Act and Rule 24B of the Rules clearly indicates that there is no scope for considering a request for examination beyond the prescribed period of 48 months from the date of application.
The counsel appearing for the petitioner referred to Rule 138 of the Rules and contended that the Controller of Patents retained the power to extend the time for a period of one month in certain cases. The Court found the contention unmerited. The Delhi High Court held that , it is candid from the reading that recourse to Rule 138 of the Rules is not available to extend the time prescribed under Rule 24B of the Rules, which expressly excludes its application to Sub-rules (1), (5) and (6) of Rule 24B of the Rules. Moreover, in terms of Rule 138(2) of the Rules, any request for extension of time has to be made before the expiry of such time as prescribed in the Rules. Therefore, even if the express language of Rule 138 of the Rules is ignored, the benefit of Rule 138 is not available to the petitioner as no such application for extension of time was made prior to expiry of the prescribed time (that is, prior to 05.10.2016). In view of the above, the petition was held to be unmerited and accordingly dismissed.
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.
Patents in force
Reported as working
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.
The Delhi High Court (DHC) in the Micromax Vs. Ericsson case, based on the suggestions exchanged by the parties and considering the procedure adopted by the Federal Courts in Australia and in the United Kingdom, would be adopting the “hot tubbing” procedure to facilitate appreciation of expert technical evidence, in a shortened procedure.
The Court may devise a slightly modified hot tubbing procedure for the present case, considering the facts of the case.
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.
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.