Indian Patent Highlights, 2016 – Patent Office, Patent Procedure and Patent Rules
Never before has the patent fraternity in India seen so much action as it has in the year 2016. 2016 was truly a year of some unprecedented thoughts and moves. This post attempts to take a recap of the year that was.
New unique numbering system for patent applications:
On 31st December 2015, the Office of the Controller General of Patents, Designs and Trademarks issued a notification announcing the introduction of a new unique numbering system for patent applications filed in India. The new numbering system took effect from the 1st of January 2016 and was aimed at bringing about uniformity in accessibility and processing of patent applications in all patent offices across India. To read more about this post, click here. The official notification from the office of the CGPDTM can be accessed from here.
CGPDTM says no to Compulsory License:
In the first compulsory license case of the year 2015, the CGPDTM rejected the application for grant of compulsory license filed by Lee Pharma Ltd. vs. AstraZeneca AB (C. L. A. No. 1 of 2015) on the 20th of January 2016. The rejection of the application was notified by the CGPDTM on the official website of the Patent Office. The Controller General based his rejection of the application on the fact that a prima facie case could not be made out after the applicant had failed to provide evidence along with the application or during hearing or by supplementary submission and had failed to satisfy the controller regarding any of the grounds as specified under Section 84(1) of the Patents Act. To read more about this you may click here. The copy of the decision can be retrieved by clicking here.
DIPP Discusses Standard Essential Patents:
The Department of Industrial Policy and Promotion (DIPP) published a discussion paper on standard essential patents (SEPs) and their availability on fair, reasonable and non-discriminatory (FRAND) terms. The paper published on 1st March, 2016 invited views from the concerned stakeholders regarding Standard Essential Patents and the issues surrounding them. Our post on this can be read here.
Electronic issue of examination reports:
In an attempt to rationalize the allotment of patent applications to examiners for examination, an auto-allotment system was introduced and implemented from the 1st April, 2016. It was decided that the First Statement of objections (FER’s) from the said date would be issued only electronically and would be sent to the agents / applicants through e-mails only. The official notification can be accessed here.
Patents (Amendment) Rules 2016:
In perhaps what can be termed as the most significant change in 2016, the Department of Industrial Policy and Promotion (DIPP) issued a notification bringing the Patent (Amendment) Rules, 2016 into effect from the 16th of May 2016. The introduction of the new rules can easily be said to have had the most significant impact of the patent fraternity since the last amendment of the rules in 2014 which was only a minor amendment in comparison to the 2016 amendment.
The Patent (Amendment) Rules, 2016 caused a lot of confusion and courted a lot of controversy considering the unclear provisions and conflicting provisions of the act and the rules. Our posts on this can be accessed by clicking on the links below:
- Patent Amendment Rules 2016 come into effect!
- Patent Amendment Rules 2016 – Courting Controversy and Confusion
- DIPP Draft Patent Rules – Salient Features
A brief overview of the changes introduced by the Patent (Amendment) Rules, 2016 are provided below:
- Start-up’s were defined and Request for Examination was defined to include a request for expedited examination.
- Every person concerned in any proceeding to which the Act or the Rules relate is now required to furnish an address of service, including a postal address in India and an e-mail address to the controller.
- The words “or courier service”, “or courier” wherever occurring in the rules were omitted and a patent agent is now required to file, leave, make or give all documents only by electronic transmission after due authentication.
- Fee paid more than once during the online filing process can be refunded.
- An applicant could now file a request for expedited examination 48 months from the date of priority on any one of the following grounds:
- India has been indicated as the competent ISA or IPEA in the corresponding International Application; or
- The applicant is a start-up
- Response to First statement of objection to be submitted within 6 months from the date of issue of FER with an extensible period of 3 months.
- Provisions of hearing through video conferencing or audio-visual communication introduced.
- 3 new forms introduced and layout of other forms changed.
List of Facilitators of Patents for Start-up:
A list of facilitators of patents for start-ups was notified by the office of the CGPDTM on 11th August 2016. The function of a facilitator as identified by the notification is to monitor and perform the steps of proceedings of a start-ups patent application at nominal costs. The list of facilitators can be retrieved from here.
Patent agent examinations:
After nearly a 3-long year wait, the Controller General of Patents called for the Patent agent examination to be held on the 27th November, 2016. The results of the same were announced on the 9th December, 2016 with about 500 candidates clearing the written examination round. The viva voce is scheduled to be held on the 10th January, 2017. We wish all the candidates appearing for the viva, the very best from us.
2016 was truly a year to remember and revisit. As mentioned earlier, the patent profession, the government and the nation as a whole have experienced an unprecedented shift of thought and execution of action, we only hope that 2017 bears the best fruits of the seeds sowed in 2016.
Authored by Gaurav Mishra