PATENT DELAYS
“THE LOCAL
MANUFACTURING REQUIREMENT HAS BEEN INCORPORATED IN THE PROPOSED RULE 24(C) BY THE COMMITTEE IN A MANNER THAT PLACES AN UNDUE BURDEN ON THE
PATENT APPLICANT.”
burden on the patent applicant. T e committee also did not defi ne the specifi cs that fall in the ‘public interest’ domain for it to be considered eligible for out of turn examination. For example in the US, an applicant may fi le
a special petition if the invention will materially enhance the quality of the environment, develop or conserve energy resources, or counter terrorism. T e applicant’s age or health is also considered as a standalone factor for expediting examination in the US, whereas in some jurisdictions, potential infringement may also be a ground. Clearly, out of turn examination of applications under this programme does not seem to be an option for most inventors, particularly for the pharmaceutical industry, which is already grappling with the stringent requirements of local manufacturing and public interest. Moreover, there are strict procedural and
substantive requirements and litigation risks (eg, prosecution history estoppel) because the applicant must make submissions and provide additional evidence in support of its case, with barely any visible benefi t.
www.worldipreview.com
It is also pertinent to note that the word
‘ordinarily’ continues to be mentioned in the proposed rule 24(c) of the Patent Rules 2003 for expedited examination, and may still pose issues of delay at the IPO, as is the existing state of aff airs. It would be futile if even aſt er paying additional fees, collecting
necessary funds,
and establishing a local manufacturing plant, the applicant’s patent application continued to collect dust at the IPO. Although the report of the committee did
not take into account many recommendations and suggestions that were made on behalf of the petitioner, it is indeed a signifi cant victory that through a single writ before the Delhi High Court, substantial funds were given to the IPO from the Indian government. It is also the fi rst time that the proposal of expedited/out of
turn examination has been
considered for introduction under Indian patent law. T is is a new wave of reform and demonstrates the methodology for future patent law reform. T e author represented Nitto Denko in this case.
Pravin Anand is a managing partner at Anand and Anand. His practice area is IP, litigation and dispute resolution. Anand has been a counsel in several landmark IP cases, has received recognition for pro bono work for rural innovators, and has spoken at various forums. He can be contacted at:
pravin@anandandanand.com
World Intellectual Property Review Annual 2015
89
OPOLJA /
SHUTTERSTOCK.COM
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