Annual report for the financial year 2016-17 published by the IPO

The Indian Patent Office (IPO) has published the Annual report for the financial year 2016-17 (based on data from 1st April 2016 to 31st March 2017).

As per the Annual report, as a result of the various procedural reforms implemented during the year, the office of CGPDTM has made remarkable achievements in terms of delivery of IP services and IT-enabled functioning during 2016-17. The following are some of the noticeable achievements for Patents:-

  • The number of patent applications examined increased by 72.2%
  • Number of grant of patents increased by 55.3%
  • Final disposal of applications increased by 37.7%, as compared to 2015-16
  • During the year, online filing has increased to 90% in patents
  • Domestic filing show 1.2% increase as compared to 2015-16.

The following are some of the noticeable achievements for Trademark and Designs:-

  • Pendency of examination of trademark applications has been brought down from around 14 months to less than 1 month in January 2017.
  • Procedural reforms in examination resulted in increased acceptance of trademark applications for publication from less than 10% to about 40%.
  • In Designs, pendency in examination of new applications has reduced from 8 months in March 2016 to one month in March 2017.
  • During the year, online filing has increased to 80% for trademarks.

Other important facts for patents that can be inferred from the report are as follow:-

  1. During the year, the office examined 28,967 patent applications as compared to 16,851 applications during the previous year. Thus, there has been about 72% increase in the number of patent applications for which first examination reports were issued, as compared to the previous year.
  2. Also, during this year 30271 applications (Requests for examination) were disposed of as compared to 21987 in the previous year, which shows 39.7% increase during 2016-17.
  3. Further, filing of Requests for the examination has increased by 7.2% from 36960 in 2015-16 to 38578 during 2016-17.
  4. The total number of patents granted during the year was 9,847 out of which 1,315 were granted to Indian applicants. Out of the total granted patents, 2,673 patents were granted to applications relating to the Chemical and related fields, 1,939 to Mechanical, 1,049 to Computer Science and Electronics, 805 to Communication, 551 to Pharmaceuticals, 579 to Electrical, 333 to Biotechnology etc.
  5. By way of representations, 206 pre-grant oppositions were received in the office and 18 pre-grant oppositions were disposed of during the year.
  6. Also, 12 post-grant oppositions were filed during the year. 12 post-grant oppositions were disposed of during the year and 160 cases remained pending for disposal by the end of the reporting year.
  7. During the reporting year, the Office initiated expedited examination of patent applications filed by Applicants for ISR/IPER before Indian Patent Office as ISA and Startups as per provisions of Rule 24(C) of the Patents (amendment) Rules 2016.
  8. 135 requests for expedited examination of applications were filed during the year which included 103 Request from ISA Applicants and 32 requests from Start ups.
  9. Top 5 Indian applicants for patents are Indian institute of technology, Wipro limited, Council of scientific and industrial research, Mahindra & Mahindra limited, Bharat Heavy Electricals Ltd.
  10. In the field of Information technology, Wipro Limited occupied the top place in the reporting year while Tata Consultancy Services Limited was at the second place
  11. Amongst institutes and universities, this year, the Indian Institute of Technology (collectively) occupied the first position while, Amity University & Indian Institute of Science occupied second and third place respectively.

The report also highlights the following improvements that have been brought about in the functioning of Patent Office by Patents (Amendment) Rules, 2016 and other reforms implemented during 2016:

    • Streamlining timelines for disposal of patent applications,
    • Creation of Startup as a new category of applicant and facilitating Startup applications with 80% Fee concession,
    • Expedited examination of patent applications filed by startups and the applicants selecting Indian Patent Office as ISA/IPEA for their PCT applications,
    • Withdrawal of application before the issuance of the First Examination Report, if applicant is not interested in pursuing examination of his application filed for patent and refund of fees paid for Request for Examination allowed.
    • Hearing through Video-conferencing or audio-visual communication devices is allowed on request made by applicant at all Patent Office locations.
    • Adjournments of hearing in opposition proceedings has been restricted to maximum two by each party, which will help to dispose of the matters in time. It is also provided that each adjournments shall not be more than 30 days.
    • Mandatory online filing by patent agents in order to speed up digitisation and processing of patent applications.
    • PCT applicant can now delete some claims while entering the national phase entry in India
    • Fees for sequence listings has been reduced with the maximum fee put at INR 1,20,000.
    • Auto- allocation of Requests for examination: This system has brought in a single group-wise queue of Requests of Examination to have uniform examination at all patent Office locations with respect to date of filing of Request of examination.
    • E-Communication: First Examination Reports are sent through e-mail. Hearing notices are also sent through E-mail. This helps in speeding up the procedures.
    • Automation of Patent grant certificates: Certificates are generated and transmitted to the applicant on the registered email and made available on the official website. Same can be downloaded and printed as desired by the applicant.
    • Patent Search System: A login-free online public search facilities for patents, “Indian Patent Advanced Search System (InPASS)”, having full text search capability, already in practice have been updated during the year to further streamline the search system.
    • Electronic payment gateway for PCT application fees has been introduced from 1st April 2016 to avoid delay in transmission of fees for PCT applications to International Bureau and International Searching Authority.
    • Dynamic utilities: Many dynamic utilities on patent are available in the IPO website for the benefit of public like displaying the status on disposal of patent applications by the respective examination groups during the specified period, viewing “First Examination Report (FER)” issued (Jurisdiction and Group-wise) at all locations of Patent Office etc.

Definition of “start-up” under the start-up India initiative

Ministry of Commerce and Industry through a notification clarified the definition of start-ups under the start-up India initiative. An entity as per this notification shall be considered as a Startup if it fulfills all of the following:

  1. Upto a period of seven years from the date of incorporation/registration, if it is incorporated as a private limited company or registered as a partnership firm or a limited liability partnership in India. In the case of Startups in the biotechnology sector, the period shall be up to ten years from the date of its incorporation/ registration.
  2. The turnover of the entity for any of the financial years since its incorporation/ registration has not exceeded Rs. 25 crore.
  3. The entity is working towards innovation, development or improvement of products or processes or services, or if it is a scalable business model with a high potential of employment generation or wealth creation.

The notification clarified that an entity formed by splitting up or reconstruction of an existing business shall not be considered as a startup.

The process of recognition of an eligible entity as startup has also been provided which is as follows:

  1. A Startup has to make an online application over the mobile application or portal set up by the Department of Industrial Policy and Promotion.
  2. The application shall be accompanied by—
      1. a copy of Certificate of Incorporation or Registration, as the case may be, and
      2. a write-up about the nature of business highlighting how it is working towards innovation, development or improvement of products or processes or services, or its scalability in terms of employment generation or wealth creation.

The Department of Industrial Policy and Promotion may, after calling for such documents or information and making such enquires, as it may deem fit, recognise or refuse the eligible entity as a Startup.

Injunction granted even when the Patent was under challenge

Pfizer Inc. filed a suit for permanent injunction restraining infringement of Indian patent no. IN209250 (which covers and claims the commercial product Sunitinib) and IN268331 (which covers the claims the commercial product Tigecycline) against Nagesh Palepu and others. The Defendants list Tigecycline and Sunitinib on their website in their list of pipeline products.

The Defendant argued that the patent is under credible challenge as two post grant oppositions and a revocation are pending in respect of the Patent and that the registration of the patent do not lead to presumption of validity. The Court did not agree with the Defendant and held that if the registration of a patent is not a proof of its validity, it is certainly not a proof to its invalidity. The Court granted a preliminary injunction holding that the balance conveniences is in favour of the plaintiff and if the injunction is not granted, it will suffer irreparable lose and injury.

Monsanto Technology’s patent for BT cotton held not patentable

The Delhi High Court has dismissed Monsanto Technology’s patent for BT cotton and the claims of the Patent have been held to be not patentable under section 3(j) of the Act. Delhi High court also dismissed Monsanto’s plea to enforce said patent partially allowing the counter-claims of Indian seed companies – Nuziveedu Seeds Ltd, Prabhat Agri Biotech Ltd and Pravardhan Seeds Private Ltd.

Stay tuned for a detailed analysis of the order

A tilt observed towards simplifying Form 27

The Stakeholder Meeting in relation to the issue of working statements was held on April 6, 2018.  The meeting was presided by the Controller General, Mr. O.P. Gupta who was ably assisted by Dr. K.S. Kardam, Mr. B.P. Singh and Dr. Usha Rao. Anand and Anand was represented by Ms. Archana Shanker.

  1. The CG clarified the mandate of the stakeholder meeting which was “revision of Form 27” within the framework of Section 146(2) and Section 122. The meeting was well represented by IP law firms, SME, FICCI, FICPI, Academicians, NGO and industry.
  2. While there were suggestions with regard to having separate form 27 for pharma and non-Pharma patents, majority of the stakeholders were of the view that filing of form 27 is onerous and the consequences for non-compliance is a big deterrent for not filing patents in India.
  3. It was also discussed that From 27 moves on the assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
  4. Several members of the ICT / automobile industry indicated that it was hard and impossible to give this information requested in Form 27 for several reasons such as there is an assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
  5. Anand and Anand made the following recommendations and also submitted Revised Form-27:
    • That the discrepancies in Form 27 should be removed;
    • A simple format should be prescribed without compromising the requirements prescribed in the law;
    • Introduction of IPC classification so as to analyse the working statements (industry wise) and use is as a tool to clear bottlenecks if any and make recommendations to the government;
    • Confidential information should not be requested and there should be a provision to keep important business information confidential which can be produced on demand under the terms of confidentiality;
    • As there is a difficultly in accurately determining the value of a patented invention that is incorporated into a product or apportioning a value to a patent incorporated into a product that is covered by multiple patents, the requirement of providing the quantum and price be done away with;
    • Expressions such as “quantum and value”, “whether public requirement has been met partially, adequately or to the fullest extent” be deleted as these are all subjective test and the patentees are under no obligation to carry out such an analysis for the purpose of form 27;
    • ‘Reasonable price’ is an ambiguous term and therefore should be deleted. What might be reasonable for an innovator company might not be considered as being reasonable for another company.  Also over the years, as technology evolves, the value of products drop even though the said product might still be covered by said patent(s);
    • There should be an option of filing one form 27 for a cluster of patents;
    • Disclosure of name of licensees should not be mandatory as there are comprehensive/worldwide license agreements including cross license agreements and it may not be possible to provide detailed information as currently required under Form 27.

Request for withdrawal of post-grant opposition not allowed

A patent granted in favor of M/s J. C. Bamford Excavators Ltd. has been revoked by Deputy Controller of patents and Design, Mr. Naveen Mathur in a post grant opposition on the grounds of non-compliance of Section 8 of the Indian Patents Act. The revocation is based on only the formal ground of section 8 and the controller has held the patent to be not only novel but also inventive.

The controller held that the applicant has failed to inform the controller about the Australian application and the Form 3 filed in December 2011 was filed beyond the prescribed period and thus section 8(1) of the Patents Act and the rules have not been complied with.

An interesting fact to note about the decision is that, the same is (1) based only on the pleadings of the parties and (2) has come after the Opponent withdrew the post-grant opposition in view of settlement between parties. The opponent in fact did not attend the hearing appointed in respect of the opposition for final arguments.

A hearing was fixed in respect of the opposition on 07/11/2017. In response to this the opponent sent a letter apprising the controller that there is a decision by the Hon’ble Delhi High Court regarding a pending infringement suit between the parties wherein the parties have come to a settlement. The Patentee attended the hearing but did not argue the matter on merits and only submitted the said Delhi High Court Order.

The controller held that he has been kept in dark and material facts regarding the suit were kept in hiding by both the applicant and the opponent. Further, the Delhi High court order only take cognizance of the settlement terms agreed upon by both the parties regarding the infringement and there is no provision to withdraw a post grant opposition under the Indian Patents Act. The Controller therefore proceeded with deciding the Opposition on merits even after settlement between the parties.

A cost under section 77 of the Patents Act has also been imposed on both the parties for not keeping the controller informed regarding the suit.

Video Conferencing- A Welcome Change initiated by the IPO

Change is the only constant thing and recently, based on the comments provided by the stakeholders, the process of holding hearings saw a welcome move in the form of installation of video conference facility at the Patent office and at the agent’s respective offices which will readily bring down the time and energy spent in travelling to the patent office.