Indian Patent Office

The Indian Patent Office is administered by the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM). This is a subordinate office of the Government of India and administers the Indian law of Patents, Designs and Trade Marks.

Patent administration

The CGPDTM reports to the Department of Industrial Policy and Promotion (DIPP) under the Ministry of Commerce and Industry and has five main administrative sections:^[1]

• Patent Office
• Designs Registry
• Trademarks Registry
• Geographical indications Registry
• Rajiv Gandhi National Institute of Intellectual Property Management (NIIPM)
• Patent Information System

The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai, but the office of the CGPDTM is in Mumbai. The office of the Patent Information System and National Institute for Intellectual Property Management is at Nagpur.^[2] The Controller General (CG), who supervises the administration of the Patents Act, the Designs Act, and the Trade Marks Act, also advises the Government on matters relating to these subjects. O.P. Gupta is the current CG and took charge on 16 November 2015.^[3] Under the office of CGPDTM, a Geographical Indications Registry has been established in Chennai to administer the Geographical Indications of Goods (Registration and Protection) Act, 1999.

The Indian Patent Office has 526 Patent Examiners, 97 Assistant Controllers, 42 Deputy Controllers, 1 Joint Controller, and 1 Senior Joint Controller, all of whom operate from four branches. Although the designations of the Controllers differ, all of them (with the exception of the Controller General) have equal authority in administering the Patents Act. An Indian Patent Examiner is mandated to search for prior art and for objections under any other ground as provided in the Patent's Act, then to report to the Controller, who has the power to either accept or reject Examiners' reports. Unlike the system at the USPTO /EPO/JPO, Examiners at IPO have only recommending power and the controllers are empowered by statute either to accept or refuse their recommendations. Examiners' reports to the Controller are not open to the public unless courts allow it (section 144 of the Patents Act). A Parliamentary committee has recommended repealing S144.^[4][5][6]

Amendments to the Patents Act

Amendments (in 1999, 2002, 2005) were necessitated by India's obligations under TRIPS, allowing product patents in drugs and chemicals. A pre-grant representation in addition to the existing post-grant opposition has been re-introduced.^[7] A provision of later amendments was on software patent-ability, which was later withdrawn in another amendment in 2005.^[8] The amendment in 2012 ^[9] focused on change in marks of Patent Agent Examination.^[10]

Indian Patent Rules were amended in 2003,2005,2006,2012,2013,2014 & 2016.The 2006 amendment of rules introduced reduced time lines and a fee structure based on specification size and number of claims, in addition to a basic fee. Indian Patent amendment rules 2012 was for amendments in criteria for patent agent exam qualification. Gazette Notification of Patent (Amendments) Rules 2013 has made necessary provisions for recognising Patent office as Examining authority and Searching authority on international level for filing, searching and examination of patent along with necessary fees. Patent amendment rules 2014 introduced a third category of applicant for small entities and revised the basic fee for filing a patent application.^[11]

Patent duration

Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.^[12]

Since the rights granted by an Indian Patent Office extends only throughout the territory of the India and ceases to have effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent in a specific country(according to its law) either through : PCT route or through conventional filing of application.

History

On February 28, 1856, the Government of India promulgated legislation to grant what was then termed as "exclusive privileges for the encouragement of inventions of new manufactures". On March 3, 1856, a civil engineer, George Alfred DePenning of 7, Grant's Lane, Calcutta petitioned the Government of India for grant of exclusive privileges for his invention — "An Efficient Punkah Pulling Machine". On September 2, DePenning, submitted the Specifications for his invention along with drawings to illustrate its working. These were accepted and the invention was granted the first ever Intellectual Property protection in India.^[13]

Geographical Indications

India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of Goods (Registration & Protection) Act, 1999 has come into force with effect from 15 September 2003. GIs have been defined under Article 22(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPS) Agreement as: "Indications which identify a good as originating in the territory of a member, or a region or a locality in that territory, where a given quality, reputation or characteristic of the good is essentially attributable to its geographic origin."^[14]

The GI tag ensures that none other than those registered as authorised users (or at least those residing inside the geographic territory) are allowed to use the popular product name. In 2004-05, Darjeeling tea became the first GI tagged product in India and since then by July 2012, 178 had been added to the list.^{[14][15][16][17][18]}

Modernisation

The Indian Patent Office has implemented a modernisation program according to an Indian govt website. And according to this website "Efforts have been made to improve the working of the Patent Offices within the resources available and that the problem of backlog is also being attacked through 50% higher monthly target for disposal of patent applications per Examiner".^[19][20][21] E- Filing of Patents & Trademarks is made possible and according to an Indian Minister the first phase of the modernisation comes to an end and the Indian Patent office wishes to be an International search Authority.^[22] The second phase of modernisation has been proposed with the aim of achieving US patent examination efficiency among others.^[23] Patent filings during the year 2007–08 were 35000.^[24]

Criticism

As per an Indian patent attorney, patents which were beyond the Act were granted by the office.^[25] The Indian Patent office had an unusually high grant rate for the year 2005–06 in respect of numbers of refused patent applications compared to other major patent offices.^[26][27] The monthly target for Indian examiners is 16 new applications per month and the Indian Patent Office strictly has only 12 months to grant/refuse the application as compared to foreign patent offices where applicants can extend the final date indefinitely. Knowledge commission, an Indian Government appointed body has recommended measures regarding the functioning of the office.^{[28][29][30][31]}

The controversial promotion of examiners as assistant controllers has led to an imbalance in the set-up with more controllers than examiners.^[32][33][34] Controller General had promised time-bound promotions to officers and recruitment of new examiners to mitigate the crisis of lack of officers and the problem of attrition due to low pay and lack of promotion.^[35] Cases of corruption have been reported.^[36] In 2012, only 137 out of the announced 257 candidates expressed interest to join.^[37][38] The monthly target for examiners are 15 new cases(FERs) and 25 disposals which has led to officers working under tremendous pressure to show output thereby affecting the quality of grant of patents.^[39][40] Indian patent examiners have the higher workload and the pay is amongst the lowest.^[41] Intellectual Property should go for Commercialisation: Nirmala Sitharaman}}</ref> A concerned government official recommended outsourcing of search in view of increased work load and the IPO has started to outsource prior-art searches violating the stipulations of the prevailing Patents Act.^[42] However, because of quality and legal issues with outsourcing, the outsourcing contracts were cancelled. The Department of Industrial Policy & Promotion under the Ministry of commerce, Government of India has come out with a discussion paper in order to address the issues plaguing the Indian Patent Office such as granting financial and administrative autonomy, separation of Patent and Trademark offices, setting up of additional offices are some of the issues put forth for input from stakeholders.^[43][44]

References

External links

• Official website
• Indian Patent Act 1970
• Geographical Indication Registry India, website
• Information about patent law in India on the European Patent Office web site