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not ready to proceed with the examination of a divisional application if the parent application has been rejected or withdrawn.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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NATIONAL BIODIVERSITY ACT: ISSUES AND RECOMMENDATIONS

An IP stakeholders meeting was held on 14th December 2016 at Udyog Bhawan, New Delhi.  Upon the request by the government, Anand and Anand made a short note with regard to the NBA related patent issues along with the recommendations. The note is being reproduced below for purpose of dissemination of information and awareness of issues in relation to NBA.

1. DELAY/90 DAYS WINDOW CRITICAL- COLLABORATION OF NBA AND PATENT OFFICE

LEGAL POSITION

Under Section 6 of the Biodiversity Act,2002 the NBA is required to dispose of an application for permission to apply and be granted an IP right within a period of 90 days from the date of receipt.

ISSUE

The NBA is taking close to 6 to 7 years to grant approval/ permission under Section 6 of the Bio Diversity Act, 2002.

RECOMMENDATION

  • Creation of IP cells: IP cells can be created within NBA, after discussion with the Ministry of Environment and Forest for scrutinizing and disposing of applications for permission under Section 6 of the BD Act.
  • Milestones with timelines can be put in place after due consultation with the NBA for the IP Cell to dispose of requests under Section 6 of the BD Act. The following timeline is recommended:

ADHERENCE TO 90 DAYS TIMELINE CRTICAL FOR AT LEAST THE FOLLOWING REASONS:

  • Section 6 prohibits anyone from making an application for patent outside India without NBA approval.
  • All Paris convention application/PCT applications are time sensitive and, therefore, filing of foreign applications/PCT application cannot be withheld indefinitely.
  • The first proviso to Section 6 states the following:

“Provided that if a person applies for a patent, permission of the National Biodiversity Authority may be obtained after the acceptance of the patent but before the sealing of the patent by the patent authority concerned”

Therefore if an applicant makes an application outside of India, the grant/rejection of his patent by a foreign patent office is not in their control and the applicant cannot be punished for delays with the approval authorities in India.

Proposed time for quick disposal of applications:

0 –DAY: Date of receipt of application

30th DAY: Issuance of formal objections

45th DAY: Terms of Agreement for Seeking IPR

60th DAY: Hearing

90th DAY: Disposal of Application

2. BD/PATENT LINKAGE

LEGAL POSITION

Under the Indian Patents Act, there is no concept of BD/Patent linkage.

ISSUES

Currently, the Indian patent office has not been granting and withholding the grant of patents solely based on the approval not having been obtained from NBA.

RECOMMENDATIONS

  • There is no provision under the Indian Patents Act for withholding the grant for patent subject to NBA approval.
  • Given the limited term of the patent, a patent should be granted if the applicant is able to produce his application for approval made under Section 6. In the event, the NBA approval is declined, the patent holder will not be able to commercialize his patent without penal consequences under the BD Act
  • There is already inbuilt mechanism within the Bio Diversity Act wherein a patent holder by merely seeking and obtaining a patent will not be able to commercialize his research/ invention till such time the patent holder has necessary approvals from the NBA.
  • This is akin to inventions in the field of pharmaceutical. While the applicant might be granted a patent under the Indian Patents Act, it does not give the applicant the right to commercialize the pharmaceutical drug till such time
  • Access; protection of IP rights and commercialization of IP are three different aspects and all cannot be clubbed together for seeking the registration of an invention by the patent office.
  • Therefore, noncompliance of Section 6 is an offence under the BD Act and not under the Indian Patents Act

3.SINGLE WINDOW CLEARANCE 

As of now there are at least three authorities with which an applicant for patent has to deal with:

  1. PATENT OFFICE for seeking registration of patent under the aegis of Ministry of Industry and Commerce;
  2. NBA permission for applying for IP under the aegis of Ministry of Environment And Forest, and
  3. DEPOSITORY INSTITUTES, for e.g NBPGR under the Ministry of Agriculture and Farmers Welfare

RECOMMENDATIONS

A single platform/ window clearance should be created at the macro level wherein of the three ministries streamline procedural issues solely for IP, so that the approval process become hassle free.

4. THE EXAMINATION OF PATENT APPLICATIONS RELATING TO VALUE ADDED PRODUCT/NTC (NORMALLY TRADED AS COMMODITIES)

ISSUE

  • Normally in a first examination report, the Controllers are unable to distinguish as whether the invention uses biological resource/value added product/NTC.
  • Section 6 of the BD Act applies only to biological resource and not to value added product or NTC.
  • Under Section 2(p) of the BD Act, value added products are exempt.
  • Section 40 of the BD Act also clearly states that the Central Government may by notification declare that the provisions of BD Act do not apply to any item including biological resources normally traded as commodity.
  • The Controllers while by way of abundant caution may raise an objection with regard to Section 6 of the BD Act, they need to waive of such an objection and proceed to grant a patent if the applicant gives a declaration or a statement to the effect that the invention does not use biological resources as defined under the BD Act but is for a value added product or NTC as defined under Section 40 of the BD Act.

IPR POLICY: A SUMMARY

The vision behind the IPR policy is ‘Create India, Innovate India’ and to integrate IP as a policy and strategic tool at national level where the key focus has been on the following:

  • to mobilize the large scientific talent pool of the country
  • to enhance innovation in areas of national importance.

It plans to create IP awareness by identifying unprotected IPRs and educating institutes, colleges, school, judiciary in relation to the importance of IPR as an economic tool for development.  It also aims to contribute towards Human Capital development by developing a pool of IPR professionals and experts in the area of policy.

The policy aims to generate more of IPR. The steps proposed for the same are as follows:

  • Improving the IPR output of national research labs, university, technology, institutes;
  • Encouraging and benefitting MSME inventors, startups, grass root innovators, etc.
  • Enhancing the national patents and design filings
  • Incentivizing and promoting R&D by providing tax rebates, financial support and creation of an effective and simple loan guarantee scheme.
  • Offering special incentives for generation of IPR and green technology and manufacture of energy efficient equipment; agriculture and pisciculture sector, GI registration.
  • Promoting innovation in healthcare; environmental protection, biotechnology, nanotechnology, ICT.

It proposes to build the legal and legislative framework by:

  • Providing an effective and stable legal frame work for protection and promotion of IPR while being committed to public health.
  • Amending the Indian Cinematography Act to provide penal provisions for illegal duplication.
  • examining the following for policy development:

it provides for an inter play of IP with other legislations such as

  • Competition Law and policy,
  • Patents and biodiversity;

Further, it provides for protection of trade secrets and transfer of technology; know-how and licensing relating to SEPs on FRAND terms.

It also proposes the following measures towards a better administration and management;

  • Department of Industrial policy and promotion (DIPP) to handle administration of Copyright Act and Semiconductor Integrated Circuits Layout –Design Act.
  • Creation of Cell for IPR Promotion and Management (CIPAM) to facilitate promotion, creation and commercialization of IP assets.
  • To enhance national, human and institutional capacity to encourage development of IP
  • Establish coordination of National Biodiversity Authority with the Patent Office
  • Standardize procedure in examination of application while exploring the possibility of expedited examination of patent applications to promote manufacturing in India.
  • Adopt best practice with regard to filing and docketing while fixing and adhering to time lines for grant and registration of opposition matters.
  • Examine and joining of Centralized Access For Search (CAS) and Digital Access Services (DAS)

It also envisages to contribute towards enforcement and adjudication by way of following:

  • To strengthen the enforcement mechanism
  • Establishment of IP cells for curbing IP offences
  • Facilitate effective adjudication of IP disputes through commercial court and promote ADR in the resolution of IP.

For commercialization of IP, the following ways have been suggested by the policy:

  • Creation of common platform to bring together investors, funding institute and IP creators.
  • Consolidation of IP created by different departments funded by the Government (IP Audit)
  • Stimulate commercialization of public funded research.
  • Examine availability of SEP’s on FRAND terms
  • Devise suitable contractual and licensing guidelines for commercialization of IPR promoting patent pooling and cross licensing.
  • Enhance access to affordable medicines and healthcare solution by developing cross sector partnership, promoting novel licensing model, developing novel technology platforms.
  • Providing timely manufacturing and marketing regulatory approvals.

The National IPR policy seems to travel beyond the mandate at least in the following respects:

  • Obliquely interfering in the health regulatory mechanism for approval of drugs without recognizing patent linkage.
  • Evolving guidelines for technology transfer and licensing of SEP on FRAND terms
  • Creating a linkage between NBA and Patent Law while no such linkage exists
  • No mention of providing autonomy to the Intellectual Property Appellate Board
  • Utility model legislation needs to be developed to look at grass root innovations
  • No incentives for investing in research in the area of developing affordable drugs in neglected sectors like
    • Expedited grants,
    • quick marketing,
    • approvals

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.

GOI to bring out a new national policy for IPR

The government of India is in the process of amending the patent rules so as to speed up patent filing and approval, in particular to promote “Make in India” and “startup India”.

The government had created a think tank to provide recommendations and draft the IPR Policy. The new IPR policy is proposed to be placed before the cabinet for approval in a month’s time.

The Government is also planning to outsource certain patent matters to about 1,000 professors in various Indian Institutes of Technology (IITs) in the country.