The Draft patent (Amendment) Rules, 2015 is a progressive initiative by the Government in compliance with the orders of the Hon’ble Delhi High Court in the Nitto Denko case to reduce backlog and provide a fee structure for sequence listing in biotech cases.
While the attempt is appreciated, the New Draft rules, in some respect, have put an onerous burden on the applicant for patent/patentee due to strict timelines, criteria and fees for expedited examination, extensions etc. The provisions that provided some checks on the Indian Patent Office have been done away with and the new fee structure seems unreasonable and prohibitive. A summary of SOME of the important aspects is as follows:
Fee in relation to transfer of an application: Whenever there is a transfer of a patent/ application from an individual to a corporate, the corporate fee should be charged from the date of the assignment under Rule 7(3) and arrear balance fee cannot be requested.
Fees for national phase application- Amendment/ Deletion of claims: The fees at the time of effecting national phase application should be payable on the claims the applicant wishes to pursue in the national phase. In view of the uniqueness of the Indian Law which that has a long list of un-patentable subject matter under Section 3, the applicant should be allowed to delete if not amend the claims which clearly falls within the Section 3. This is consistent with the decision of the Hon’ble IPAB in Dr. P. Parikumar & Ors. VS. Controller of Patents Order no. 17 of 2013 wherein it was held that deletion is not an amendment.
Fees in relation to expedited examination: The fees for expedited examination should be divided into two components: Processing fees (up to 10% of the total fee); and Examination fees (at least 90% of the total fee). In the event, the request for expedited examination is disallowed, the examination fee should be refunded.
Fee for pre-grant oppositions: A fee should be provided for filing of pre-grant opposition to prevent frivolous filings.
In case, an application is withdrawn prior to examination, the examination fee as well as extra claim fee beyond 10 claims should be refunded.
Expedited examination: This provision is arbitrary and against principles of equity. The fees is prohibitive and beyond the reach of small enterprises (SME)/ MSME and individual inventors as well as startups who might not be able to pay the exorbitant fee for expediting examination.
Discriminatory provision: Expedited examination is India is selected as the ISA or IPER is a discriminatory provision and is in complete violation of the Paris convention and TRIPS where all international search authorities and IPEA authorities are all considered at par
Local manufacturing requirement cannot be a being a pre requisite for making a request for expediting examination is in contravention that the Supreme Court order in Bayer vs. Union of India.
Unpredictability in market dynamics: The patent rules do not take into account the unpredictability in the market dynamics particularly in the pharma industry where it takes several years to obtain authorizations from Drug Controller.
Rather the grounds on which expedited examination can be requested should be enlarged to include: In order to promote green technology; In case there is a threat of infringement; The patent is granted in at least in 3 major jurisdictions such as US, EP and JP; That applicants age (65 years or more) or health; and Contribute to the development of conservation of energy
A time line should be prescribed for disposal of oppositions;
The time lines prescribed for the applicant are too short and it is recommended that the same may be enlarged to 6 + 3 months or 4+2+2 months from the date of issuance of the first examination report.
Having done away with timelines in issuing examination reports, there remains no accountability on the patent office for ensuring that the time lag between the filing of request for examination and issuance of the first examination report is significantly brought down. Statistics reveal that the pa tent office is currently taking anything between 2 to 6 years from the date of filing of the request for examination to issue the first examination report. This is a great cause of concern and negates any revisions proposed by the amendment rules to clear the backlog and therefore timelines should be introduced on the Patent Office as well in order to achieve the desired objective.
One que for requesting examination (normal): In India there are four patent offices. In order to prevent forum shopping, it is recommended that a “single queue” be maintained for request for examination
Express Request: The Indian Patent Rules provides for express examination request Rule 20(4)(ii) for national phase applications for which the applicants are required to pay a 40% enhanced fee then a normal request for examination. Yet, no special treatment or special queue has till date being suggested or recommended for such cases.
Therefore three separate ques be created for; express request for examination under Rule 20(4)(ii), examination under Rule 24B; and expedited examination proposed under Rule 24C
Notice of Allowance:
Since the time line for grant of a patent is not defined and may vary from case to case, the time period for which the applicant shall continue filing information under section 8 becomes undefined. It is therefore, advisable to introduce a provision in Rule 24B requiring the Controller to issue a notice of allowance intimating about the expected date of grant of a patent. This is in line with the Hon’ble High Court order in Snehlata vs Union of India.
The cap amount proposed is too high and is equivalent to the fee for 200 pages of sequence listing.
The average sequence listing size is much smaller than 200 pages. The cap amount does not really serve to reduce the fee burden on the applicant who will end up paying the fees for their entire sequence listing of less than 200 pages when the sequence listing in hard copy does not even serve any purpose.
Therefore, sequence listing should be treated independent of the complete specification for the purpose of determining the fees payable. Either of the following two fee structures can be followed:
A flat fee for sequence listing in consonance with the draft Patents (Amendment) Rules 2010; OR a minimum fee of INR 800 to a maximum of INR 80000 depending on the number of pages.
There was no necessity in changing the form 27. The information prescribed imposes an undue burden on the patentee and will discourage applicants from filing of a patent in India given the fact that the consequences are very severe including criminal consequences.
Also, what needs to also be appreciated that in technological domains such as ICT, inventions might be used to form a part of a larger device of another company and it is unreasonable to ask the patentee to provide this information, eg. OEM
Patent certificate should be accompanied with the complete specification as granted. Rule 74
Small entity status should be redefined to include universities.