Summary
The DIPP Draft Patent Rules propose amendments aimed at reducing delays in the Indian patent application process. Prompted by a writ before the Delhi High Court, the government constituted a committee to recommend solutions for timely patent grants. Recommendations include expedited examination for applicants establishing local manufacturing and increased resources at the patent office. The post also highlights the potential benefits of adopting the Patent Prosecution Highway, which is not currently specified in the policy but could further accelerate patent prosecution in India.
Background
There has been considerable discussion regarding the proposed amendment to the Patent Rules, 2003 drafted by the Department of Industrial Policy and Promotion (DIPP). For many patent applicants who have experienced the delays inherent in the examination and grant process — which in total can take approximately six to seven years — the suggested amendments offer some relief. The extended pendency period significantly reduces the effective monopoly term a patentee can enjoy. Conversely, where examination proceeds without delay, the practical scope of patent protection is extended. While developments with respect to e-filing and changes in the patent fee model are welcome, they address process efficiency rather than the core issue of time-bound grant.
Delhi High Court Writ and Government Response
A writ filed before the Delhi High Court addressed delays in the issuance of patent grants. During the pendency of the writ, a committee was appointed by the government to formulate a scheme for the time-bound disposal of all pending patent applications and to propose solutions for fresh applications as well. The Court took note of the committee’s findings and directed the government to act on the following:
- Appointing personnel at the patent office within nine months and in accordance with the plan scheme of the Modernisation and Strengthening of Intellectual Property Offices (MSIPO), who would issue first examination reports within a reasonable time;
- Increasing the allocation of funds for the creation of additional posts for examiners and for training newly recruited examiners;
- Introduction of a flexible complementing scheme for the staff of the Patent Office so as to attract the best talent possible and prevent attrition;
- Constituting a Committee to consider:
- Measures that would compensate patentees for the time consumed in the examination process; and
- The factors necessary for expedited or out-of-turn examination of patent applications.
Proposed Rule 24C: Expedited Examination
The government-appointed committee submitted its report in February 2015 and was unanimously of the view that out-of-turn or expedited examination could be permitted where the applicant sets up local manufacturing units in India for utilising the invention as disclosed in the application. Accordingly, the inclusion of Rule 24C in the Patent Rules, 2003 has been proposed for expedited examination of patent applications.
The Case for Patent Prosecution Highway
Another efficient mechanism that warrants consideration is the introduction of the Patent Prosecution Highway (PPH), a process that accelerates the examination of a patent application by allowing participating patent offices to share prior art searches and examination information. Under the PPH, an Office of Second Filing (OSF) may use the prior art search and examination proceedings of the Office of First Filing (OFF), which accelerates the examination process significantly in the OSF. This also reduces the number of office actions in the OSF, thereby shortening the pendency period and reducing the total cost of prosecution.
While the Draft National IPR Policy mentions that steps need to be taken to establish close cooperation with IP offices in other countries, it does not specifically address the Patent Prosecution Highway. The PPH is a targeted mechanism that holds substantial potential to improve the life cycle of Indian patent applications, and its explicit inclusion in the policy framework warrants consideration.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.