PATENT DELAYS
Dealing with delays
New moves towards tackling the shortcomings of the Indian patent-granting process are welcome but not without problems of their own, says Pravin Anand of Anand and Anand.
W
hile delays and an backlog of
excessive pending patent applications at the Indian Patent
Offi ce (IPO) have been an issue of serious concern for a while, it is only recently that the problem has been seriously addressed, following two writ petitions fi led at the Delhi High Court by Nitto Denko, a company based in Japan. According to the Patent Rules 2003, the fi rst
examination report should ordinarily be issued within six months of the date of the request for examination, or six months from the date of publication, whichever is later. However, the IPO is taking up to eight or nine years to grant a patent. It is against this backdrop that the writ petitions were fi led before the Delhi High Court, which fi nally granted them on October 9, 2014.
Outcome of the order • T e government has committed to spending more than 309.6 crore rupees (equivalent to about $49 million) for recruiting fresh examiners and solving all related problems with salaries, attrition rate, etc.
• Additionally, a committee comprising eight
members—including the joint secretary, representative of expenditure, representative of personnel and training and a few senior advocates—was created to deliberate on the issues of: a) waiver of maintenance fees as a compensatory measure for the delay in the patent’s grant; b) patent
term extension to
compensate for the delay; and/or c) out of turn/expedited examination. T e committee submitted its report on February 27, 2015. With respect to waiver of
fees and patent
term extension, the committee concluded that the practices exist only in the US and are not applicable to India. T e committee also said that the 20-year patent
term already provides for delays and therefore does not require a further extension. According to the committee, out of
examination may be considered a viable option subject to certain prerequisites: • Where the invention directly contributes towards the ‘public interest’; and
• When the applicant sets up manufacturing
88 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014 local capabilities to utilise the invention as disclosed in the application turn
or manufactures it within two years from the date of fi ling the request for expedited examination. T e committee proposed a new rule 24(c)
to the Patent Rules 2003 to incorporate such a measure. Under the new rule, the patent applicant would be
required to provide a
corroborative statement from a bank or fi nancial institution or auditor in India to show that the applicant, or its assignee or prospective manufacturer, has suffi cient capital to meet the reasonable public requirement or that suffi cient capital or facilities will be made available within six months if a patent is granted.
Likely impact While the decision seemed like a way forward towards tackling the issue of unreasonable and untimely disposal of patent applications in India for the fi rst time, the report of the committee has to an extent diluted the impact and the objective of the writ petitions. T e local manufacturing requirement has
been incorporated in the proposed rule 24(c) by the committee in a manner that places an undue
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