This post was first published on 9th October, 2011.
DIPP has published a discussion paper on ‘Review of Organizational structure of the office of the Controller General of Patents, Designs, Trademarks and Geographical Indication’. This is 12th discussion paper in the consultation series and third paper dealing with issues relating to IPR. This Discussion Paper deals with the scope and options for reorganizing the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), to make it more responsive to the needs of Intellectual Property (IP) holders and users while enhancing the effectiveness and efficiency of its operations. The reasons mentioned in the paper regarding need of changes in the organizational structure are to meet commitments made under the TRIPS agreement; growing importance of IP in Indian economy; been designated as International search authority(ISA/IPEA ) under PCT and the proposed association to the Madrid Protocol.
In the paper, DIPP suggested to have separate full-fledged Registry for Trademarks and GI. The rationales for this proposal as given by DIPP are difference in subject matter and skill sets, independent functioning, establishment matters, operational issues and accession to the Madrid protocol.
The following issues are for consideration:
1. Given the radically different skill requirements of trade mark and patent office staff, the operational difficulties and the present challenges being faced by the O/o CGPDTM, is it desirable to establish an independent office for the Trade Marks and GI registry?
2. If so, what should be the organisational and reporting structure for each office?
3. Given the sensitivity of Patent law and practice in India and also the experience in other major IP Offices such as the USPTO, would it be appropriate to consider making the Office of CGPDTM autonomous? Is it possible to bifurcate the two offices and make the Trade Marks Registry and the Patent and Design Office two autonomous organizations?
4. What legal changes are required? What changes are required to the rules?
5. Can the reorganization of the office of CGPTDM be taken up within the existing framework without seeking any amendments to the law? If so, what can be an ideal model ?
6. How should the office of the Controller be strengthened?
7. The Department had taken an initiative to outsource some part of the prior art search of the Patent office to CSIR. This project is proving to be beneficial. Which other organizations could be tapped for the purpose. Are there likely pitfalls that the department must take precautions against? What could be such precautions?
8. Is a similar outsourcing (including employment of temporary but qualified personnel) exercise possible in case of trademarks where more than 400000 trademark applications are pending at various stages? If so, what could be the safeguards that should be put in place?
9. What other measures can be used to improve the base of examination of applications within the framework of the existing legislation?
10. In spite of e-filing for patents etc. and streamlining of the examination process, is there a need for setting up additional offices?
11. The National Institute of Intellectual Property and Management, which is housed in Nagpur, is at present under the supervision of the CGPDTM. This institute needs to be developed into a world class institution for research and training in the field of IP. Would it be better for such an institution to be directly controlled by the Ministry or should it continue as one of the offices of CGPDTM?
12. The recruitment of officers has been delayed inordinately by the complicated, prolonged procedures involving interdepartmental approval. What could be the options to address this problem? Should a special dispensation be sought to address this issue. If so, what could be the possible course of action?
13. Since Trademark registration is a quasi judicial process involving opposition cases and hearings, what can be done to address the large number of vacancies for the post of Assistant Registrar and above? If it is not possible to select new officers immediately, what can be done to remedy the situation?
14. Considering the importance of trademarks in India and the fact that a majority of the application are made by Indian applicants, should the size of the Registry be addressed in the XII Plan? What could be an appropriate structure?
15. In view of the fact that some innovations can qualify for different kinds of IPRs, would it be better to have a single window at the front end for applicants for all kind of IPRs while the specific IPR issues could be handled by different offices at the back-end ?
16. Any other views on the subject.
Author: Anirudh Narayan Bhatt
Image from here