The article has been written by Rashi Chandok.
It has been published by Rachit Garg.
Table of Contents
Patent registration in India is growing rapidly, which has led to an increase in the demand for new and reformed laws. Patents are governed by the Patent Act of 1970 and recently the government introduced the Patent (Amendment) Rule, 2021. The government aims to promote innovation and the development of new technologies in society.
With its developing IP ecosystem, India has piqued the interest of the global community. There are certain provisions in the Indian Patent Law, like those in any other jurisdiction, that are unique.
Patent search is an important tool for businesses all around the world. To maintain a competitive advantage, a corporation develops a road plan based on many aspects, with patent searches serving as an essential tool to provide strategic insights.
This article seeks to explain and provide some patent-related developments in India.
Foreign Filing License (FFL)
What is FFL?
A foreign filing license (FFL) is required for Indian residents who wish to file for patents outside of India first before applying in India. Section 39 of the Patents Act of 1970 lays forth the rules for the license.
It is necessary to obtain an FFL from the Indian Patent Office for patent registration. The FFL requirement allows Indian authorities to monitor all inventions, and in particular, defense or atomic energy-related inventions in the national interest.
What does the provision state?
The provision states that a person (Applicant or Inventor) who is a resident of India has to request for an FFL in India if he/she wishes to file a patent outside India without first applying in India. Typically, the Applicants resort to applying for patents directly outside India when the invention does not have a commercial value in the Indian market, or the invention is being considered as a non-patentable subject matter in India.
In such cases, written permission has to be sought from the Indian Patent Office (IPO) for applying for patent registration outside India.
To apply for a foreign license, the applicant must include a brief description of the invention. The following documents must be attached:
- All the names, addresses, and nationality of inventors residents of India.
- Power of Attorney (POA) from the inventor(s) or applicant residing in India, when a patent agent has been appointed to represent them.
- Title of the invention with disclosure including drawings, if any
- Names of the co-inventors (non-residents in India).
- Name and address of the Applicant(s) (if rights assigned to an applicant).
- The name of the country/countries in which the application is expected to be filed.
- Reason to make such an application.
Phase filing and amendments
What is National Phase Filing?
A national phase filing application is a type of application to file to obtain a patent in a number of countries simultaneously on the basis of one International/ PCT application. It must be filed within a period of 12 months of the priority date.
These applications are filed as per the Patent Cooperation Treaty (PCT), which is administered by World Intellectual Property Organization (WIPO). There are a total 153 PCT members, so the applicant can nationalise the application in any or a combination of 152 countries through the PCT route.
The PCT route allows an applicant to seek patent protection for an invention in a large number of countries at the same time by filing a single worldwide patent application rather than multiple separate national or regional patent applications (through the Paris Convention route).
Since the IPO accepts English, no translation in local languages is necessary for submitting and prosecuting patent applications in India. When compared to jurisdictions such as Japan, China, Brazil, and South Korea, which all need native-language translations, this results in a considerable reduction in overall patenting costs.
According to one estimate, translation into the original language costs around 35% of the overall cost of patent protection. In addition, based on the international patent cooperation treaty (PCT), Indian patent law enables a 31-month term to submit a national phase application, as opposed to the 30 months granted by other jurisdictions.
Patent prosecution process in India
What is the patent prosecution process in India?
The patent prosecution process (patent registration) in India begins with filing a patent application in the IPO. Once the application is submitted, the officials perform document verification and technical examination to check if the invention meets the requirements of patentability, i.e. industrial applicability, novelty, and statutory (subject matter eligible).
If the examiner raises any objection(s) in terms of patentability, he/she shall incorporate these in an examination report and send it to the applicant(s) for submission of a reply in a stipulated time,
Patent registration is now done between 8 months to 2 years, rather than 3-6 years, due to the faster inspection procedure.
The applicant has six months from the date of the first examination report to respond. If all of the objections are addressed, a patent is granted directly. Otherwise, an oral hearing is held after some time to allow the applicant to address any unresolved concerns before issuing a judgement. In the event of an unfavourable ruling, the applicant has two options: file a review petition with the patent office, or file an appeal with an applicable high court.
What is a Working Statement?
A working statement refers to a statement prescribed to the patentees and licensees to explain the working of their patents granted in India. It ensures that patents are granted to promote more inventions in the country and it is worked in India on a commercial scale without any delay. Therefore, a working statement is an integral part of patent registration in India.
As per Patent Rules, every patentee is required to file out Form 27 to submit its working statement. Failure to file this statement does not immediately result in the loss of patent ownership or license rights, but the risks are elevated. In case the patentee fails to provide this declaration on a consistent basis would certainly make the patent subject to abandonment or revocation, perhaps resulting in the loss of rights.
Earlier, Form 27 was filed for each patent granted by the applicant. Now the process has been simplified, it is known that a product is protected by one patent only. A product is protected by various patents, as per recent amendments one form i.e. Form 27 for multiple patents is permitted only if these conditions are fulfilled and they are as follows:
- Patents should be correlated,
- All these patents must be granted to the same applicant(s),
- The approximate revenue/value earned from one patented invention cannot be calculated independently of that accrued from related inventions.
After updating Form 27, the Patent (Amendment) Rules, 2020 will hopefully address a number of issues that are faced by patentees and licensees in the process of regulatory compliance in India. The amendment has simplified the form, and in the process, reduced ambiguity, and generally made it less cumbersome for filers overall.
Abolishment of IPAB
Intellectual Property Appellate Board (IPAB)
It was a quasi-judicial body constituted by the Central Government and was established in September 1958. IPAB was officially abolished on August 14th 2021, when the President gave assent to the Tribunal Reforms Act, 2021. With the adoption of this legislation, the IPAB’s jurisdiction returns to the High Courts and commercial courts. Fresh appeals under the Patents Act, the Trademarks Act, and Geographical Indications Act must now be filed with the appropriate high court.
The IPAB has been in the headlines for a variety of reasons, including from lack of independence to a shortage of appointments to poor appointment quality to unlawful appointments to a lack of resources.
Intellectual property disputes are often more complicated than civil and criminal cases, and their disposal needs a reasonable level of understanding. IPAB was established particularly to deal with intellectual property-related disputes, and as a result, judges with a high degree of knowledge in intellectual property concerns were nominated to the tribunal.
The dissolution of the IPAB appears to be a rash decision, which may result in unjustified delays in cases of intellectual property violation. Instead of completely dismantling IPAB, more focus should have been placed on its good administration.
The process of Patent registration has evolved for good in the past few years. The Patent (Amendment) Rules, 2021 would also encourage educational institutions to submit more patents in order to promote research and the commercialization of innovative technology.
Likewise, Indian Patent Search can be made hassle free by using search engines like QuickCompany, Google Patents etc.
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