Government in action: calls meeting with stakeholders to redress issues in relation to IP

A meeting with IP Stakeholders was held on 14th December, 2016 on steps taken for improvement in processes in IPO and their impact. A gamut of issues were raised therein with a variety of suggestions received from stakeholders for various forms of IP. The ambit of topics is huge and also includes NBA , wherein the stakeholder, Anand and Anand in particular made some recommendations which has made everyone mull over the issues. These recommendations can be accessible here.

Some of major patent related issues and recommendations are as follows.

  • Most patent offices do not charge any fee for change in address for service in India. Attorneys have to pay an exorbitant fee for changing their address and the attorneys have to bear those expenses.
  • There are some patent applications where decisions are awaited for many years even after hearing/rehearing
  • Some patent applications have been abandoned even though a response was filed within time.
  • File wrappers are not updated timely i.e. the communications between the Controller and the Applicant is not timely uploaded.
  • Inconsistency in the implementation of the guidelines related to CRIs especially in the Patent Office, Delhi.
  • Video-conferencing works well when the Applicant is represented by a Patent Agent. But in cases where the Applicant for instance is an individual inventor and is not represented by a Patent Agent, the Applicant may face hardships.
  • Multiple hearings are being appointed in patent applications, particularly, where the Controller was transferred to another jurisdiction. This is happening even in opposition matters.
  • A clarification is needed in respect of the newly introduced 3 months extension in Patents Rules. Can the extension be taken for one month thrice or it has to be taken at once for 3 months.
  • IPAB is in suspension for past 6 months.
  • Examination of divisional and parent patent applications is not in accordance with the Patents (Amendment) Rules, 2016.
  • Controllers in some instances are not ready to proceed with the examination of a divisional application if the parent application has been rejected or withdrawn. There is no clarity among the Controllers on the legal aspect of this issue and it is a big challenge.
  • Once the last date for a patent application is over there are no timelines. Intention to grant with the text intended to be granted may be sent to the Applicant.
  • Examination of amended cases – new Patents (Amendment) Rules, 2016 provide that amended cases will be examined in the order in which the responses are filed. That is not being implemented.
  • Pre grant opposition procedure is being abused. Controllers and opponents in the guise of public interest are allowing abuse to happen. More clear procedures are required to prevent the abuse.
  • Atomic energy related cases – there is no application of mind while recommending a patent application to the Atomic Energy Department. No hearing is offered to the Applicant. Hearing is necessary before recommending to the Atomic Energy Department.
  • Biotechnology related applications – great cause of concern that monoclonal anti-bodies related applications are being rejected under section 3(c) and 3(e). 9000 patents have been granted in India, but the Chennai Patent Office has started rejecting applications related to monoclonal anti-bodies. It is a fundamentally incorrect stance.
  • Sequence listing fees has a cap now. The Office should not charge any fee for sequence listings.
  • Working of patents – The information required and format is vague and is pain for the applicants to submit electronically.
  • More time is required to prepare for hearing. Hearing notices provide 2 weeks which is short.
  • We may start formality examination before substantive examination and the FER is issued.
  • There are a number of volatile technologies that require expedited examination as they have a short life, for instance, of 6 months.
  • Collaborative research – if an Applicant notices that by entering India in National Phase, they will face criminal action, the Applicants drops the Indian Inventor’s name. Foreign filing permission should therefore be allowed with retrospective effect so that Indian inventors do not suffer.
  • A discussion with the examiner may be allowed as it may reduce the number of objections.
  • Can a facility be provided whereby a SMS is also sent to Applicant / Inventor in addition to email communications being sent by the Office?
  • SIPP – Procuring a start-up certificate is very difficult.
  • Patent Office, Delhi has rejected a number of CRI related patent applications. These guidelines may be kept in abeyance until the new ones are issued.
  • Certified copies are not being received in patents in 21 days (specifically in Chennai office).
  • Emails may be uploaded into the respective file wrappers.
  • Before the electronic modules were created, some requests were filed and the offices reply that since modules are not there, such requests cannot be processed.
  • What is our official stand on PPH?
  • Universities – they are treated as large entities and there is huge financial burden that has to be incurred by them if filing/prosecuting patent applications.
  • Indexing and classification of a large number of uploaded documents
  • Chennai Patent Office – the records destroyed in the Floods of 2015 are no longer available.
  • Private PAIR should be contemplated for providing access to the Applicant before publication.
  • An opposition division should be created as patent oppositions have been pending for years. Officials with legal background should be taken in such divisions as sometime the Controllers fail to appreciate legal aspects and aspects related to evidence.
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India’s National IPR policy approved

Indian Cabinet has approved national IPR policy on 12th of May 2016. The Department of Industrial Policy & Promotion (DIPP) will be responsible to co-ordinate, guide and oversee implementation and future development of IPR’s in India.

Stay tuned on this section for more updates on this.

DIPP RELEASES A DISCUSSION PAPER ON SEPs

The ICT space has managed to garner a lot of heat in the recent past. After the release of CRI guidelines which has created a furore amongst the stakeholders, the Department of Industrial Policy & Promotion (DIPP) has published a discussion paper on “Standard Essential Patents, and their availability on FRAND terms” on March 1,2016.

The idea behind the paper is claimed to build a suitable policy framework to define the obligations of SEP patent holders and their licensees.

The DIPP invites views from the concerned stakeholders regarding the following issues for resolution and the last date to respond to it March 31, 2016. A digest on this paper, our observations and comments shall follow very soon.

Stay tuned for further updates on this section.