IP IN INDIA
is alarming. One estimate has put it at 40 million cases. Te courts are understaffed, both in terms of administrative resources and judicial officers. Tus, as a matter of priority, the prompt appointment of judges and the necessary staff to support their functioning is needed.
Te courts also need a case-management system so that cases can be decided expeditiously. A system that encourages the e-filing of cases should be set up. Further use of IT in the working of the courts and the maintenance of records would go a long way towards rendering timely decisions. Te training of judges to keep them abreast of technological advances is also an important area and is required.
Is Indian patent law non-compliant with TRIPS, as alleged by multinational pharma companies?
“A PARTY SEEKING A CL SHOULD IDEALLY FIRST SEEK A ‘VOLUNTARY LICENCE’ FROM THE PATENTEE AND EXHAUST ALL OTHER OPTIONS BEFORE COMING TO THE PATENT OFFICE.”
and protecting the public health. Indeed, under the TRIPS Agreement, governments have enough flexibility to exclude certain subject matter from granting patents and define the ‘scope of and requirements for patentability’.
Does the judicial system give reliable, timely decisions? What needs to improve?
Te Indian judiciary has been proactive in recognising that IP needs to be protected to fuel innovation and protect consumers’ interests. Te Delhi High Court is the most IP-savvy court in the country and attracts most IP litigation. Not all courts are the same in terms of rendering timely decisions: the courts in some states are reluctant to grant interim orders quickly, resulting in cases dragging on for many years.
In most courts, a trial can take several years to conclude and the backlog of cases at the courts
www.worldipreview.com
In the wake of the Indian Supreme Court decision on the Glivec patent, some commentators in the US have suggested that the requirements of Section 3(d) are “additional requirements for patentability beyond novelty, commercial applicability and non-obviousness” and are in breach of the TRIPS Agreement. Tus, they want the US administration to take India to the WTO dispute panel for violating its obligations under TRIPS.
However, as noted by the Madras High Court, Section 3(d) does not discriminate against innovative pharmaceutical companies under Article 27 of TRIPS but makes a judicious use of
guidelines in a way that brings uniformity and consistency in the decisions on the grant or refusal of patents.
When it comes to the digitisation of records and making its web portal user-friendly and versatile, several new features have also been developed by the patent office to allow access to information and bring transparency to its workings.
What do you think needs to change at the Indian Patent Office?
First, it needs to reduce the time taken to examine patent applications. Te patent office is currently taking five to seven years to grant a patent application and these delays effectively reduce the patent
term. Te delays are also
clearly disadvantageous to the patentee since the patentee cannot
initiate an action for
infringement until a patent has been granted. Further, the patentee is required to pay a patent maintenance fee from the third year onwards (although the fee is payable upon grant), so in effect the patentee is compelled to pay a maintenance fee when the patent was still pending and had not been granted, and is in effect penalised for patent office delays.
the flexibility provided within the TRIPS
framework, and is a perfectly legitimate exercise of national discretion by a member state. Hence, it would be wrong to say that these provisions which may seem unique to India are in breach of TRIPS.
What recent changes have brought clarity and helped develop consistency in the decisions of patent offices across the country?
Te Indian Patent Office has taken several steps to bring uniformity and consistency to the treatment of patent applications. Most important has been the introduction of a series of Examination of Patent Applications’.
‘Guidelines for
Tese guidelines take into account the decisions of
various courts and the appellate board,
and present working examples in which an applicant could be refused for not meeting certain patentability requirements. Although the guidelines do not have the force of law, they will be helpful for applicants to draſt their applications and claim the relevant inventions in a way that meets the standards of the patent office. Also, one can expect examiners based in the four different patent offices to apply these
Ranjan Narula founded specialist IP firm RNA, IP Attorneys in 2004. With more than 20 years of post- qualification experience, Narula advises IP holders on IP management issues and provides strategic advice on IP clearance, exploitation, acquisition, protection and enforcement.
World Intellectual Property Review Annual 2014 103
Also, administrative deficiencies in the application can be communicated to the applicant much sooner without the applicant having to wait for the examination report. Te patent office database needs to be further updated and upgraded, given the significant revision in fees.
Ranjan Narula is the managing partner of Ranjan Narula Associates. He is based in New Delhi and can be contacted at:
rnarula@indiaiprights.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172