Feedback on easing out procedural challenges under the Patents Act, 1970

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Feedback on easing out procedural challenges under the Patents Act, 1970

Sudipto

@Sudipto

July 25, 2023

Public Policy

114

Nasscom submitted its detailed feedback to the DPIIT, Ministry of Commerce and Industry on how to further strengthen the Patents Act, 1970 with respect to promote innovation and ease of doing business. This extensive review was undertaken pursuant to a public consultation held by the DPIIT on March 10,2023. The consultation was called to discuss reform with respect to these three items reflects the government’s intent to strengthen the innovation ecosystem and the Indian patent regime.

Our feedback highlights how to ease out procedural challenges with the extant pre-grant opposition process, compliance complications arising out of Section 8 and information sought under Form 27. We have provided seven recommendations covering three agendas/areas as highlighted below:

The pre-grant opposition should be limited either to issuance of FER or post issuance of FER with a fixed time frame. At present, pre-grant opposition can be filed anytime from the date of publication of patent application until the patent is granted. US, UK, and Australia have a clear timeline for pre-grant opposition or permit limited intervention during this stage. (See Annexure I of attachment for section on the global position). In the absence of any fixed pre-grant stage timelines, the process becomes open-ended in India which substantially delays in grant of patents. This lacuna has been abused by parties with no locus standi, to stall the process (Please see refer page 4 of Detailed Recommendations - section on frivolous complaints). The problem gets aggravated because India like many other countries does not have a patent term adjustment where time lost in prosecution of patents is accommodated in the term of the patent (See, Annexure II on global position in the attachment). Moreover, the India Patents Act allows a right of post-grant opposition, where a person can raise opposition within 1 year after the grant of patent.

2. The need to intimate the Controller about every foreign patent application under Section 8 is redundant as India is now an International Search Authority (ISO) and a member of the Paris Convention and the WIPO CASE, so it has access to extensive corresponding patent applications. Publicly available databases provide access to information for the same family such as wipo.int; google patents; Pat seer; Orbit, etc all of which are accessible by the Patent office and the public. However, a violation of this provision exposes the applicant to revocation of patent & criminal liability.

3. Form 27 requirement appears to be unique to India (See, Annexure III, Table II of the attachment). The purpose of working status of a patented invention (Form 27) is to be a ground for granting compulsory license. The rationalisation of Form 27 vide Patent amendment Rules 2020 was an appreciable step, but the problems remain.

The abovementioned challenges results in the patent granting process taking 2-3 times more time than jurisdictions like in the U.S. and Japan. The average pendency time for final decision at the Indian Patent office is 50 months compared to 15.3 in Japan, 18.5 in China or 21.2 in USA. In 2021, 61,573 applications were filed in India as compared to 1.59 million in China. The number of patents being filed in India are relatively low. The problem of delays could exacerbate as patent applications rise in future with increasing innovations. Worse, the time-consuming process could deter patent fling.

The data above is documented in our recent report “Unpacking India’s IP Ecosystem- For an Innovation-led Future” (2023). In the survey for the above report, we found that the challenges arising out the extant pre-grant opposition, S. 8, and Form 27 (frivolous opposition/litigation led delays, disproportionate compliance obligations, and fear of exposing sensitive business information), disincentivises patentees in India.

Please see the attachment for our detailed set of recommendations with justification.

For further details on this subject, please write to Sudipto Banerjee at sudipto@nasscom.in, with a copy to policy@nasscom.in.

Patents Act Form 27 Pre grant opposition patents Innovation EoDB

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Sudipto