What is The Importance Of Investing In India's Patent Ecosystem And Why Is It Urgent?
Part 2
A Trariti Consulting Group Study by Swapnil Roy
Issues In The Process
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No fixed timelines for each step of the process
Delays in patent processing in India can also be attributed to the absence of fixed timelines for each step of the process. This lack of timelines leads to various problems, such as delays in pre-grant oppositions filed under Section 25(1) of the Patents Act 1970.
There is no set time frame for such oppositions, leading to build-ups and frivolous complaints that further delay the process. In addition, the statute does not specify a time limit for the controller to conduct a hearing to determine the validity of responses to the First Examination Report and any outstanding objections. On average, this process takes about 6-9 months.
The decision after the opposition hearing by the controller, which should typically happen in 1 month, often takes about 3-4 months. These issues are also compounded by the manpower shortage in the patent office.
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Cumbersome compliance requirements
Certain provisions of the Patent Act 1970 can be burdensome for applicants due to the compliance requirements they entail. For instance, some provisions mandate the periodic submission of information pertaining to the prosecution of foreign patent applications.
While this requirement may have been relevant in the past, it is no longer necessary for Patent Cooperation Treaty (PCT) applications, as WIPO has developed a tool called WIPO CASE (Centralized Access to Search and Examination), which consolidates information on the status of patent applications and related details in numerous jurisdictions.
India is already part of this initiative, which eliminates the need for periodic submissions related to foreign prosecution.
https://www.mondaq.com/india/patent/1092108/frivolous-pre-grant-oppositions-ipab39s-order-provides- guidelines-on-dealing-with-frivolous-pre-grant-oppositions
What Needs To Be Done For Patenting System?
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Increase the manpower in the patent office
To address the backlog of 1.64 lakh pending patent applications, it is crucial to approve additional posts at the controller level and increase manpower in the patent office from 860 to about 2800 in the next two years. This can be achieved by collaborating with academic institutions to develop a short certificate course for hiring examiners on a contractual basis. Additionally, it is necessary to improve the career path of patent office employees by revisiting the Modified Flexible Compensation Scheme (MFCS).
The Office of CGPDTM is a cash positive organisation and adding more manpower is revenue positive for Government . Approximately 60% of the revenue of the Office of CGPDTM is received from the patents. Hence, financial reasons should not be thought of as a hindrance to adding more manpower in the patent office. In fact, due to addition of technical manpower, delay in grant of patents will be expedited which in turn add more revenue.
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Cumbersome compliance requirements
Certain provisions of the Patent Act 1970 can be burdensome for applicants due to the compliance requirements they entail. For instance, some provisions mandate the periodic submission of information pertaining to the prosecution of foreign patent applications.
While this requirement may have been relevant in the past, it is no longer necessary for Patent Cooperation Treaty (PCT) applications, as WIPO has developed a tool called WIPO CASE (Centralized Access to Search and Examination), which consolidates information on the status of patent applications and related details in numerous jurisdictions. India is already part of this initiative, which eliminates the need for periodic submissions related to foreign prosecution.
https://www.mondaq.com/india/patent/1092108/frivolous-pre-grant-oppositions-ipab39s-order-provides- guidelines-on-dealing-with-frivolous-pre-grant-oppositions
Source: Based on Annual Reports of CGPTDM
Source: Office of CGPDTM
Source: Annual report of Office of CGPDTM
The increase in manpower has already demonstrated a positive impact on revenue generated. For instance, an increase in controllers means more applications could be processed and hence the patent office received higher renewal fee for maintaining patents (Figure 8) despite large fee reductions for startups, MSMEs, etc
Solve The Issues In The Process
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Fixing timelines for various steps of the process
To address the delays in processing of patent applications, fixing timelines for each step of the process is crucial. For instance, the lack of a fixed time frame for filing a pre-grant opposition often leads to build-ups and delays. In contrast, the U.S. Code § 122 mandates a time limit of 6 months for any party to submit relevant material for examination after the first publication of the patent application by the Office.
Therefore, fixed timelines need to be established for each step in the process to ensure timely and efficient processing of patent applications.
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Remove the Cumbersome compliance requirements
Provisions in the patent acts create onerous compliance requirements for applicants, such as the need to periodically submit information about the prosecution of foreign patent applications. However, since India is now a part of WIPO CASE, which provides consolidated information for PCT applications, this requirement is unnecessary. Instead, the provision should be amended so that the controller can request specific information from applicants for PCT applications.
The patent office should also utilize WIPO CASE to access information about patent application decisions in other important jurisdictions, which would help expedite national applications.