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Patent Wish List – 2017
I am sure all of us have one or the other kind of a wish list set up for 2017. In keeping with the trend we have decided to prepare and put out our own wish list for everyone to read.
2016 was witness to some very significant changes to the patent system in India. A number of measures were adopted to streamline the patent laws and to make their workings more efficient. While some of these changes were much needed and welcome, others were simply unnecessary and caused a lot of confusion among the applicants, officers and agents alike. That being said, here below is our wish list for 2017.
Wish #1 – Examine patent applications fast and grant patents faster.
Despite all the measures undertaken by the Department of Industrial Policy and Promotion (DIPP), the speeds of patent grants have not improved thus far. A direct cause for this is the slow and inefficient patent examination process that needs immediate course correction. The fact that there is still a 6 – 7 year lag in the issue of first examination reports despite hiring a number of examiners is a cause for concern. Therefore, our first wish is to see more applications getting examined in 2017 and reduction of the huge backlog in this regard at the patent office.
Wish #2 – Bring in clarity with respect to the Patent (Amendment) Rules 2016
The Patent Amendment Rules, 2016 have created chaos and confusion among the IP community since the day they came into effect. Many of the provisions of the rules remain confusing and unclear. For instance, a clarification is still needed in respect of the newly introduced 3 months extension for responding to the examination report. It has still not been clarified if the extension has to be taken for one month thrice or if it has to be taken at once for 3 months. We therefore wish that the Office of the CGPDTM and DIPP will identify all such issues and address them as soon as possible in 2017.
Wish #3 – Bring in a higher degree of transparency, update the file wrapper on patent database periodically.
While inPASS, the Indian patent search database is appreciable in its own way, many a times key documents for an application are not uploaded onto the database. In the list of issues identified in the IP stakeholders meeting held on the 14th of December 2016 it was brought to notice that some patent applications were abandoned even though a response was filed within time. In other instances it was alleged that applicants did not receive the hearing notices on time. In order to eliminate such discrepancies, we wish that the patent office would consider updating the file wrappers strictly and regularly through measures such as uploading hearing notices in respective file wrappers, a practice that currently does not exist. In my individual opinion the patent office may take inspiration from USPTO and base the file wrapper history in a fashion similar to or exactly in the same manner as provided by the USPTO PAIR.
Wish #4 – A provision to revive applications abandoned unintentionally.
Although this wish in itself may be subject to debate, there have been several instances where patent applications have been abandoned unintentionally. Such issues are most often faced by individual inventors who do not use the services of a patent agent. For instance, there have been cases where, individual applicants did not know of the abandonment of their applications. The reason for abandonment in most cases is the failure to respond to the examination report. The applicants have complained that they could not respond to the examination report because they did not receive the examination report. The reasons included change in address or discontinued email addresses. The patent database shows an application as being ‘under examination’ even when the examination report has been issued. Such statues cause confusion to a regular applicant not utilizing the services of an agent. The status must ideally indicate the last action and date for the same. Example, First Examination Report issued on DD/MM/YYY. Keeping these arguments in mind we wish that a provision could be introduced, much like as it is in the US and certain other jurisdictions where a petition for revival can be filed in cases of abandonment. Also, we wish that the status of the application be made more precise and accurate.
Wish #5 – Implement Patent Prosecution Highway in India
The Patent Prosecution Highway (PPH) is quite an effective way for accelerating patent prosecution procedures by the sharing of Patent Search and Examination results between some Patent Offices. Information and undertaking regarding foreign applications under section 8 of the Patents Act is as close as we get to PPH. Implementing Patent Prosecution Highway in India would certainly increase the number of patent filings in India, as it would increase the efficiency and prosecution timeline for the patent applications filed in India. Implementation or at least a consideration of the implementation of the Patent Prosecution Highway in India is one more wish for 2017.
As the saying goes, ‘You’ll always wish you could wish for more”, we could continue the wish list, wishing for more and more things that we want in 2017; But we must remember that it’s easier to eat better when you eat small. With this we hope that 2017 heralds new ideas and invigorates all of us with new energy, irrespective of whether we are the applicant or the officers at the patent office.
Wishing you all a very prosperous and Happy New Year.
Authored by Gaurav Mishra.