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not ready to proceed with the examination of a divisional application if the parent application has been rejected or withdrawn.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.
Advertisements

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.

CRI: A crying need of the hour

The fate of guidelines issued by the Indian Patent Office in respect of Computer Related Inventions (CRI) has been in a state of suspended animation until recently. The roller coaster ride that CRI guidelines have been through have been encapsulated as under:

  • The draft CRI guidelines of 2013 were finalized after extensive feedback from all stakeholders and was put up on the Indian Patent Office website on 08th August, 2013.
  • A meeting with the stakeholders on the draft CRI guidelines 2013 and the feedback received was held on 11th October, 2013. After almost two years, the guidelines were finalized on 21st August, 2015.
  • On 15th September 2015, the Software Freedom Law Center (SFLC) made a representation to the Prime Minister of India with the following objections:- 
  1. The guidelines in the current form provide patenting of software and broaden the scope of Section 3(k);
  2. The guidelines allow software patents for writing codes which is a dangerous proposition.
  3. The guidelines in the current form run counter to the objective under Section 3(k) which unconditionally excludes mathematical methods, business methods, algorithms and computer programs per se. 
  • SFLC also stated that the final guidelines of 2015 differ significantly from the draft guidelines of 2013 especially in the following key areas:- 
  1. The mere use of mathematical formulae in a claim according to the 2015 guidelines would not necessarily render the claim as being a mathematical method, irrespective of whether the said claim cites a technical application. Thus, methods of encryption/decryption, encoding, decoding are mathematical methods and therefore should not be patentable. However, the patent office guidelines state to the contrary.
  2. Business methods: The CRI guidelines 2015 renders business methods as being patentable which are otherwise excluded in Section 3(k). According to the 2015 guidelines, just because a claim uses expressions like ‘enterprise’, ‘business’ etc. it is not rendered as being a business method and therefore the guidelines recommend that the patent application has to be seen as a whole in substance. This is impermissible.
  3. The 2015 guidelines, in relation to computer program per se, refer to the legislative intent behind the phrase ‘per se’. However, the 2015 guidelines overlook the evolution of Section 3(k) through the Amendment Bill 2005 and Amendment Ordinance, 2004. The current guidelines in Section 3(k) on computer program per se permits that CRIs may be patentable require:
  • Novel hardware; OR
  • Novel hardware with a novel computer program; OR
  • Novel computer program with known hardware, which goes beyond the normal interaction with such hardware and effects a change in the functionality and/or performance of existing hardware.

The guidelines add that a computer program, which when running or loaded onto a computer, goes beyond the “normal” physical interactions between software and hardware and is capable of bringing further technical effect,  may be patentable narrower the intended scope of Section 3(k).

This is not allowed as only novel hardware with software should be patentable.

  1. The aforesaid issues according to the SFLC would stifle innovation; the Government’s “Make in India” initiative; cause harm to the Indian industry and The Controller General clearly stated that if there is something contrary to law in the guidelines, he would not be reluctant to suspend and put them in abeyance and reconsider the same.
  • The majority of the stakeholders were of the view that changes in the guidelines from time to time introduce uncertainty and is reflective of chaos and confusion with regard to the understanding of the provisions of law.

Anand and Annad made the following recommendations made before the Controller General:

  • With the CRI guidelines a correct position was taken by the patent office after due consideration of all the recommendations of the stakeholders.
  • That SFLC has already made a representation in 2013, written and oral and they were adequately represented.
  • That the current guidelines did not in any way state that business methods or algorithms or mathematical methods are patentable.
  • That the CRI 2015 guidelines clearly state that the patent office should focus on the underlying substance of the invention and not the form in which it is claimed while examining a CRI. This in any case ensures that a mathematical method, business method or algorithm will not be allowed even if they are camouflaged
  • It was also pointed out that in sections 4.5.1 ; 4.5.2 of the guidelines relating to mathematical methods and business methods respectively, this issue that was raised by SFLC was taken care of and was clearly reflected in the language used which is that it substance, and not form, would determine the patentability of an invention under Section 3(k). It was only worded positively.
  • The objection of SFLC that decoding, encoding, encryption, decryption techniques were nothing but mathematical methods was extensively discussed by providing examples. It was stated that if the invention is for a mathematical method, it is that it what is not patentable but a known mathematical method if used in a technical application or to solve a problem, the said method is being patentable as the invention is not in the mathematical method. Similar examples were given in the area of business methods and algorithms.
  • In so far as section 5.1, is concerned SFLC was of the view that novel hardware is needed for an invention to be outside the purview of “per se”. The stake holders contested this position.
  • The Controller General at the beginning of the meeting stated that India would not follow EP and UK practice/ law in relation to the Section 3(k), in view of the objection made by SFLC. However, it was pointed out that in para 119 of the Ericson vs. Intex case, it was clearly held that when the Bill of 1999 was referred to the JPC it was suggested by various experts and stakeholders that India should follow the EP/UK route and not completely exclude computer program patentability. The Court further held that the parliament excluded the aforesaid proposition and added the word per se in Section 3(k).
  • It was brought to the attention of Controller General, para 120 of this judgment that states that if a computer program had a technical advancement and technical effect then it was patentable. It was therefore stated that if the judiciary has already interpreted a provision of law, we as stakeholders cannot modify or change this interpretation through administrative orders and guidelines.
  • When SFLC was referring to the legislative intent including the debate in the Parliament on the 2004 ordinance, it was informed the Controller General that the stakeholders and Patent Office cannot step into the shoes of the legislature. Any reference to the legislative intent or JPC recommendation cannot be used to interpret Section 3(k) through the guidelines. It was informed to the CG that the JPC report and intent of the legislature has to be looked in by the Courts in India to interpret a provision of law as was done by the Hon’ble Supreme Court in the Novartis (Glivec) case for Section 3(k).

The stakeholders to get back to the Controller General by giving them negative examples by 24th January, 2016.