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Indian Patent Office

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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 Indian government 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:

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 The Rajiv Gandhi National Institute for Intellectual Property Management [1] is at Nagpur.

The Controller General, who supervises the administration of the Patents Act, the Designs Act, and the Trade Mark's Act, also advises the Government on matters relating to these subjects. Mr. P.H.Kurian was the first IAS officer to serve as Controller General. Mr Chaitanaya Prasad has assumed charge as CGPDTM recently.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 75 Patent Examiners, 70 Assistant Controllers, 7 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.

The controversial promotion of many Examiners as Assistant Controllers has further led to an imbalance in the set-up of the Patent Office, thereby disrupting the normal functioning of the organisation. There are now more supervisors (Controllers) than workers (Examiners).[2][34].

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.(Sections 12 -15 of the Patent's Act, page 100,Item 8.04.10 of Patent office manual). This means that only Controllers have the power to grant or refuse patents in India. 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 [35].

Examiner attrition seems to be issue with the Office.[3][4] Despite the attrition the number of first office actions have increased from 2004–05 probably due to increased output from the Office.[5] Ex-Controller General, Mr. P.H.Kurian, in an interview, had promised time-bound promotions to Officers and recruitment of new Examiners. This may mitigate the crisis of lack of officers and the problem of attrition due to low pay and lack of promotion, if implemented. There are around 75 examiners who have been languishing in the same post without promotion for over 12 years from 2003 onwards.[6] Many highly qualified (some of them have international reputation for their research and academic attainments) examiners have left the Indian Patent Office as the IPO could not provide a good work environment.[7][8][9][10][11] Corruption, nepotism and bribery within all level of staffs and officers in the Indian Patent Office (particularly Mumbai, Delhi and Kolkata) and the Department of Industrial Policy & Promotion, Government of India are prevalent.[12] A very strong coterie-driven politics persists within the atmosphere of the Patent Office.[12]

However the promise related to promotion made by the former CGPDTM was not kept and is leading to a bigger crisis of mass attrition by newly recruited examiners (recruitment based on only an examination, the candidates were never interviewed by neither the Patent Office nor CSIR) who were recruited by the HR wing of CSIR after spending huge amounts of exchequer's money. CSIR charged 40–50 million INR for conducting the selection examination. Out of the announced 257 posts only less than 135 selected candidates have expressed interest to join. Among those who joined, many have already submitted their resignations and still more are waiting in the wings to resign soon. This is an indication of the deep malaise within the system which is being ignored or covered up silently.[13][14]

The crisis of attrition is becoming more severe day by day as more examiners are leaving the organisation. The management is quietly covering it up by increasing the work load of remaining officers. At present, monthly target for examiners are 15 new cases(FERs) and 25 disposals(including further examination reports). This has led to officers working under tremendous pressure to show output thereby affecting the quality of grant of patents.[15] The recent case of revocation of a granted patent under section 66. being a good example of such pressure.[16]

The issue of attrition due to lack of promotion to Examiners was acknowledged by the Minister of Commerce and Industry Mrs. Nirmala Sitharaman during IP day celebrations. She said that "she was aware of the challenges faced by patent offices across the country because of high attrition rate and low remuneration but said that policy level help would be available.".[17]

A recent report of a concerned government official has recommended outsourcing of search in view of increased work load. IPO has started to outsource prior-art searches violating the stipulations of the prevailing Patents Act [36]. However, because of quality and legal issues with outsourcing, prior art searching is done in house only and outsourcing contracts have now been cancelled.

According to Indian newspaper Mint, Indian patent examiners have the world's highest workload and lowest pay (Rs46000 p.m entry level pay for a fresher as on 14 June 2012) . While a patent examiner in the European Patent Office would handle less than seven patent applications per month and a USPTO examiner would handle eight applications per month, an Indian examiner reportedly handles at least 40 applications a month. However an Indian examiner's monthly salary is less than a third of his/her counterparts in other foreign patent offices.[37] 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. 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.[18] There are few strong and constructive comments based on the existing set-up of the Patent Offices in India. One very strong and constructive comment is written by Dr. Arijit Bhattacharya[12] who was an Officer of the Indian Patent Office. Such strong and constructive comments citing empirical evidences are very rare in the history of the Indian Patent System. However, Government of India and its Secretaries seem to be reluctant on the issues of corruption, bribery, nepotism and internal politics. On the issues of upliftment of the Indian Patent Office no action has been adopted by the Ministry of Commerce or the Department of Industrial Policy & Promotion by way of stopping the menace of corruption, nepotism, bribery and internal politics.[19]

Amendments to the Patents Act

Amendments (in 1999, 2002, 2005, 2006) were necessitated by India's obligations under TRIPS, allowing product patents in drugs and chemicals. Another important feature was the introduction of pre-grant representation (opposition) in addition to the existing post-grant opposition mechanism. The pre-grant representation has had success in a short span. One example is the abandonment of a patent application by Novartis on Glivec (Imatinib Mesylate), revoking the earlier granted EMR on the same drug used to treat Leukemia.[20]

A controversial provision of this amendment was on software patent-ability, which was later withdrawn in another amendment (Patents Act, 1970, as amended by Patents (Amendment) Act, 2005). It is clear from the legislative history and interpretation of provisions in the Patent Act, 1970 (as amended in 2005) that the Patent office should not allow intrinsic patent-ability of computer programs.[21] But there is evidence suggesting that the Patent office has acted otherwise.[21] Patent Rules 2003 were amended in 2005, 2006 and again in 2012. Some of the important features of both the 2005 & 2006 Rules are the introduction of reduced time lines and a fee structure based on specification size and number of claims, in addition to a basic fee. The amendment in 2012 '[22] focused on change in marks of Patent Agent Examination.

'Though clause (k) of Section (3) of the Indian Patent Act holds computer programmes 'per se' or algorithms as non-patentable, technical 'application of software' or 'software combined with hardware'[23] including embedded systems, may be granted patent' according to R S Praveen Raj, former patent examiner from Indian Patent Office.

Indian Patent Rules amended further in 2012, 2013, 2014. Indian Patent amendment rules 2012 was for amendments in criteria for patent agent exam qualification. The marks for viva voce was reduced to 50 from 100 and in order to qualify exam.The candidate shall secure minimum 50% marks in paper I and paper II, further candidate shall secure total aggregate 60% marks in patent agent examination. Gazette Notification of Patent (Amendements) Rules 2013 has made necessary provisions for recognizing 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 has introduced following major provisions (a) a third category of applicant under Rule 2(da), wherein person other than a natural person shall include a "small entity"[those enterprises will be considered as "small entity" wherein the investment of such an enterprise in plant and machinery does not exceed INR 100,000,000 Crore (approximately US$16,360,000)]. (b)The basic fee for filing a patent application has been revised and is now also based on the criterion whether the applicant lodges an application with Indian Patent Office through e-filing or in a physical form (i.e. submits physical copy of the application). he amended rules provide for 10% additional fee when the applications for patent and other documents are filed through the physical mode, i.e., in hard copy format as opposed to the online mode(c)A new Form 7 (A) has been provided for filing "Representation Opposing Grant Of Patent" for which no fee shall be payableand form 28 to qualify small entity status at every stage and the provided fee is applicable for a small entity.[24]

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 (See No.41 of FAQs on Indian Patent Office website).[25]

First indian Patents

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.[26]

Geographical Indications tags

Further information: List of Geographical Indications in India

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.”[27]

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. Darjeeling tea became the first GI tagged product in India, in 2004–05, since then by July 2012, 178 had been added to the list.[27][28][29][30]

[31]

All the items with GI tags are listed below:

State Items
Andhra Pradesh Srikalahasthi Kalamkari, Kondapalli Bommallu, Machilipatnam Kalamkari, Budiiti Bell & Brass Craft, Andhra Pradesh Leather Puppetry, Uppada Jamdani Sarees, Tirupathi Laddu, Guntur Sannam Chilli, Venkatagiri Sarees, Bobbile Veena, Mangalagiri Sarees and Fabrics, Dharmavaram Handloom Pattu Sareesand Paavadas
Himachal Pradesh Kinnauri shawl
Karnataka Sandur Lambani embroidery, Kasuti embroidery, Ilkal sarees, Channapatna toys, Hoovina Hadagali jasmine, Monsooned Malabar coffee, Monsooned Malabar Robusta Coffee and Coorg Green Cardamom, Molakalmuru sarees, bronze ware, Navalgund Durries, Mysore Ganjifa cards, Mysore silk, Mysore agarbathis (incense sticks), Bidriware (metal design), Mysore rosewood inlay, Mysore sandalwood oil, Mysore Sandal Soap, Mysore traditional paintings, Coorg orange, Mysore betel leaf, Nanjangud banana, Mysore jasmine and Udupi jasmine.
Kerala Kasaragod sarees, Kuthampully Saree, Mattu Gulla,aaranmula kannadi.
Maharashtra Nashik valley wine, Mahabaleshwar strawberry and Paithani sarees
Rajasthan Bikaneri Bhujia
Tamil Nadu Salem Venpattu, Kancheepuram Silk Sarees, Madurai Sungudi Sarees, Bhavani Jamukkalam, Coimbatore wet grinders, Thanjavur Veena, Madurai malli, Thanjavur Paintings, Temple Jewellery of Nagercoil, Thanjavur Art Plate, E. I. Leather, Kovai Cora Cotton, Arani Silk, Swamimalai Bronze Icons, Eathamozhi Tall Coconut, Thanjavur Doll, Nilgiri(Orthodox) Logo, Virupakshi Hill Banana, Sirumalai Hill Banana
Telangana Hyderabadi Haleem, Pochampalli Ikat, Gadwal Sarees, Silver Filigree of Karimnagar, Nirmal Toys and Craft, Nirmal Furniture, Nirmal Paintings, Cheriyal Paintings, Pembarthi Metal Craft, Siddipet Gollabama, Narayanpet Handloom Sarees
Uttar Pradesh Allahabad Surkha, Lucknow Chikan Craft, Mango Malihabadi Dusseheri, Banaras Brocades and Sarees, Hand made Carpet of Bhadohi, Agra Durrie, Farrukhabad Prints, Lucknow Zardozi, Banaras Brocades and Sarees (Logo), Kalanamak Rice
West Bengal Darjeeling tea

The Venkateswara temple in Tirupati,Andhra Pradesh, India's richest temple, scored a sweet legal victory: the Geographical Indications Registry upheld its claim of a GI registration over the famous Tirupati laddu. The Registry’s order granting the GI tag was, earlier, challenged by R S Praveen Raj, a scientist with CSIR-NIIST.The registry issued the verdict, upholding TTD's claim and fined Praveen Raj Rs10,000.[32]

Criticism

As per An Indian patent Attorney in a Leading IP magazine, patents which were beyond the Act were granted by the Office.[33] The Indian Patent office seems to have unusually high grant rate (refer to page 14 of the patent office annual report[34] for the year 2005–06 in respect of numbers of refused patent applications), compared to other major patent Offices (EPO annual report for 2006, p22), and indicates the complete failure of the "well established" quality assurance systems covering the patent granting procedures.[35] The reason behind this is attributed to the fact that a majority of patent applications filed in India are PCT National Phase cases which have an International Search/Examination report. Therefore it is easy for Controllers to decide on granting a patent for the application.This is not the case in well established Patent offices of developed countries where a majority of the applications are local(ordinary) applications. Here a search has to be carried out and based on the documents recovered during this search, the final outcome of the application is decided. Hence there can be no comparison with the number of cases examined and granted in India and abroad. Further, the monthly target for Indian examiners is 16 new applications per month (in addition to amended applications and other responsibilities) as compared to a maximum of 5 abroad. More importantly, 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 govt appointed body has recommended measures regarding the functioning of the Office.[36] However these recommendations have not been implemented till date.

Recently the patent grant of a pharma drug has attracted attention.[37][38] It should also be noted that the Patent office has not come up with final guidelines (Manual of Patent Practice and Procedure). It is unclear whether the patent office is still revising its draft manual which is kept for public inspection since 2005. A Delhi high court judgment has found that the Indian Patent Office has followed a lowered inventive step criterion (TSM method)in respect of a cancer drug patent.

The patent office is also not enforcing the rules and regulation mentioned in the act.

The rules are un-clear and there is no fixed action stated. The word "shall" has been used as a protection shield by the Patent office and has never published any of the application within one month from the date of request or expiry of said period. This is one of the examples, many more can be listed. It seems to be that Patent Office is biased.[citation needed]

Generally, the time taken by the Indian Patent Office (IPO) to grant a patent is around 3–4 years from the date of first filing. US Attorneys are behind USPTO to reduce the 2 years period taken by the USPTO.

A very constructive criticism and subsequent evidences of corruption, bribery, nepotism and the use of extra-Constitutional authority of power by a set of coterie-driven officials led by senior officials of the Indian patent office have emerged from Dr. Arijit Bhattacharya, a former Controller of the Kolkata Patent Office.[39]

Modernization

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".[40] Full text of Indian Patents are now available along with prosecution history [38],[39]. 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.[41] The second phase of modernisation has been proposed with the aim of achieving US patent examination efficiency among others.[42] Patent filings during the year 2007–08 were 35000.[43]

References

  1. ^ [1] NIIPM website
  2. ^ [2] Indian Patent Office Breaks with Tradition and Gets a New Chief
  3. ^ [3] Attrition-hit offices get impatient- Jobs-News By Industry-News-The Economic Times
  4. ^ [4] Patent offices suffer as private companies lure experienced staff
  5. ^ [5] The Advantages and Harmonization of Patent System, See page 52
  6. ^ [6] Meeting India IP challenges-Source-Managing Intellectual Property
  7. ^ [7] Professor Tapas Kumar Bandyopadhyay-Indian Institute of Technology, Kharagpur
  8. ^ [8] Dr. Tarakanta Jana – Scientist, NISCAIR Research Council
  9. ^ [9] Dr. Arijit Bhattacharya – Technologist, Scientist & Academician
  10. ^ [10] Dr. Bidhan Chandra Bera – Biotechnology Scientist – National Research Centre on Equines
  11. ^ [11] Dr. Dhananjoy Saha – Academician
  12. ^ a b c [12]
  13. ^ [13]
  14. ^ [14] Parliament discussion on Patent Office
  15. ^ [15] Livemint-To clear backlog, Indian patent office to hire 500 over five years
  16. ^ [16] Staff shortage dogs patent office as govt sits on compensation plan-livemint
  17. ^ [17] Intellectual Property should go for Commercialisation: Nirmala Sitharaman
  18. ^ [18]
  19. ^ [19] Livemint-Corruption in Patent Office
  20. ^ [20] Intellectual Property Rights and Access to ARV Medicines:Civil Society Resistance in the Global South, See Page 49
  21. ^ a b Patent Protection for Computer Programs in India: The Journal of World Intellectual Property [21]
  22. ^ http://ipindia.nic.in/iponew/patent_Amendment_Rules_2012.pdf
  23. ^ http://www.blonnet.com/2007/05/23/stories/2007052304882300.htm
  24. ^ http://www.ipindia.nic.in/IPActs_Rules/IPActs_Rules.htm
  25. ^ [22] History of Indian Patent System-Source-Government of India
  26. ^ http://anilbme.blogspot.in/2009/07/first-patent-application-in-india-guess.html
  27. ^ a b "Karnataka gets highest number of GI tags". Business Standard. 11 April 2008.
  28. ^ "Tirupati laddu gets global patent". The Times of India. 16 September 2009.
  29. ^ Govind D. Belgaumkar and Anil Kumar Sastry (27 October 2006). "Unique symbols of Karnataka". The Hindu.
  30. ^ "GI tag: TN trails Karnataka with 18 products". The Times of India. 29 August 2010.
  31. ^ "A copyright for Bikaneri bhujia, Hyderbadi haleem". Indian Express. 14 September 2010.
  32. ^ {http://www.financialexpress.com/news/tirupati-temple-to-keep-laddu-patent/981588/0}
  33. ^ [23] Managing Intellectual Property
  34. ^ [24] Patent Office Annual Reports-Cource-Government of India
  35. ^ [25] Appointment of the Indian patent office as an international searching and preliminary examining authority under the pct, see page 5-Source-World Intellectual Property Organization
  36. ^ [26] Knowledge Commission recommendations- IPR.doc
  37. ^ [27] Lawyer group to challenge patent for Roche?s anti-HIV drug – livemint
  38. ^ [28] Controller orders inquiry into Chennai office patent for Roche – livemint
  39. ^ [29]
  40. ^ [30] Welcome to India in Business
  41. ^ [31] PIB Press Release
  42. ^ [32] Outcome Budget 2007–2008, see page 43-Source-Ministry of Commerce & Industry, Department of Industrial Policy & Promotion, Government of India
  43. ^ [33] Record Grant of Patents-Press Releases-Source Press Information Bureau, Government of India
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