Category Archives: India Patent Filing

Way Forward for the Critical Requirement of Furnishing Statement Regarding Working of Patented Invention in India

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Statute corresponding to patents in India has provisions that mandate furnishing of information that attempts to establish the extent to which patented technology is being worked on a commercial scale in India. The nature of the information sought is such that compliance with these provisions is onerous, if not impossible, given the changing dynamics of business and inventions. Consequently, one could argue that most of the patent owners have in-principle failed to comply with these provisions. Further, although there are penal provisions applicable for noncompliance, such provisions have never been exercised.

Concerns regarding the above discussed provisions always existed among patent professionals and other stakeholders. However, these provisions are now being discussed extensively because of a public interest litigation, and the order that followed. The provisions, which are at the centre of the controversy include Sections 146(1), 146(2), 122, Rule 131 and Form 27.

146. Power of Controller to call for information from patentees

(1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.

(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.      

122. Refusal or failure to supply information.

(1) If any person refuses or fails to furnish

(a) to the Central Government any information which he is required to furnish under sub-section (5) of section 100;

(b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with fine which may extend to ten lakh rupees.

(2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.

131. Form and manner in which statements required under section 146(2) to be furnished.

(1) The statements shall be furnished by every patentee and every licensee under subsection (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licencee or his authorised agent.

(2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.

(3) The Controller may publish the information received by him under subsection (1) or subsection (2) of section 146.

(Emphasis added)

 

Section 146(1) recited above gives power to the Controller to call for information describing the extent to which the patented invention has been commercially worked in India. In practice, the Controller can exercise the power conferred by the referred section to decide request for compulsory licence to a patent, which may not be sufficiently worked in India.

On the other hand, Section 146(2) read with Rule 131 requires every patentee and licensee to furnish, every year, information describing the extent to which the patented invention has been commercially worked in India. Failure to comply with either of the above referred sections attracts penal provision as recited in Section 122.

In our view, Section 146(1) is an extremely useful provision, which may be exercised in specific circumstances, as explained earlier. However, an amendment to the section to explicitly recite the circumstances under which the Controller may/shall exercise the power to call for information, may prevent arbitrary use of such power.

The real problem, in our opinion, lies with Section 146(2), which requires voluntary submission of information, on a yearly basis, describing the extent to which the patented invention has been commercially worked in India. In our view, Section 146(2) should be amended to require at least one among patentee or licensee to state whether the patented invention is commercially worked or not in India, instead of requiring information concerning the extent of working of patented invention in India.

Our proposed amendment to Section 146(2) is based on the very purpose of having this provision in the Act, and the practical usage of the information furnished under this provision. The information submitted under Section 146(2) may be used to adjudicate request for compulsory licence to a patent, request to revoke a patent, or request for injunction. However, the proceedings concerning each of the listed requests may typically involve extensive submission, by parties involved in the dispute, of information describing the extent to which the patented invention is commercially worked in India, and the eventual judgement may rely of such information, and not on the information submitted under Section 146(2) on a yearly basis. In case the listed topics were to be adjudicated purely based on information collected under Section 146(2), then the efforts involved in putting together such information is colossal, if not impossible for large patent portfolios. The legislature also recognises the same, and its intent is expressed by the very fact that Section 146(1) exists. In view of all this, the information sought under Section 146(2) is redundant, and unnecessarily burdensome.  

In conclusion, in our opinion, Section 146(2) should be amended such that, it should suffice if the patentee submits whether the patented invention is worked or not commercially in India, on a yearly basis. In case the patented invention is not worked, then the patent may be considered for license or compulsory licence, by third party. On the other hand, if the patented invention is marked as worked, then in all probability, detailed proceedings would follow when the patent is the subject matter of a challenge, in which case the Controller has the power to call for information under Section 146(1).

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India working towards disposing pending patent applications in the next two years

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Minister for Commerce and Industry, under which the Department of Industrial Policy and Promotion (DIPP) functions, has been taking several initiatives for substantive improvement of IP environment in India. The recent initiatives include comprehensive National IPR policy, relocation of Copyright Office to DIPP, merger of the Copyright Board with the Intellectual Property Appellate Board (IPAB), establishment of Cell for IPR Promotion and Management (CIPAM) and launch of Start-up Intellectual Property Protection (SIPP) scheme, among others.

Adding to the above initiatives, the office of Controller General of Patents, Designs and Trade Marks (CGPDTM) is making efforts to clear the backlog of about 2.3 lakh pending patent applications. DIPP has hired substantial number of examiners and is likely to dispose these pending applications in next two years. The introduction of expedited examination and the recruitment of around 450 patent examiners to add to the pool of existing 130 examiners at the Intellectual Property Office (IPO) is witness to such efforts of the DIPP. This recruitment has increased the speedy disposal of pending patent applications. In the year 2016-17, about 9,847 patents were granted by the IPO, as against 6,326 in the previous year. IPO has improved its count in issuance of examination reports, which has increased to 6,000 patent applications a month from the earlier 1,500 applications.

Suresh Prabhu, Minister for Commerce and Industry, while addressing the Leadership Summit on Anti-Counterfeiting and Brand Protection at New Delhi last month, highlighted the efforts and initiatives of DIPP and IPO to dispose off the pending applications at the earliest. He announced that the Ministry is working to come up with an effective plan by which patent applications will be disposed in the least possible time. These initiatives are expected to bring down the pendency of patent applications and targeted at final disposal of patent applications from the present 5-7 years to less than 18 months.

We welcome the initiatives and efforts of the ministry in establishing a strong IP regime, and more importantly a time bound one, which is likely to boost innovation in the country.

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Facebook’s systematic plan for Peer-To-Peer mobile payments market in India

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FACEBOOK has filed a patent application in India, which attempts to protect a technology that enables making and receiving payments using a messaging applications. The patent application envisages peer-to-peer payment between users of a messaging application, such as WHATSAPP. Selected figures from the patent application indicates the intended use of the technology.

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This Indian patent application is based on a US patent application, which was filed in December, 2014, after FACEBOOK acquired WHATSAPP. Interestingly, in April of this year, WHATSAPP announced that it would be introducing digital payments in India.

One could argue that WHATSAPP is positioned to corner a significant share in the digital payment market in India. For starters, WHATSAPP has a huge consumer base in India and is popular even among those who are not so digitally savvy. Adding to that is the convenience factor in making payments using a chat application. To top it all, the patent application, which might eventually be granted a patent, considering that there are several patents related to payments granted in India. As an example, EBAY was granted a patent (patent number 242805) covering certain technology that facilitates micropayments between parties. A patent grant to FACEBOOK will enable WHATSAPP to monopolize key aspects of the technology that enables peer-to-peer payments using messaging application.

The patent application and WHATSAPP’s digital payment initiative may be the first big bet by FACEBOOK to directly generate revenues from WHATSAPP since its acquisition.

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Adding inventors to or removing inventors from an India Patent Application

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Listing correct inventors in a patent application is important. An incorrect listing may not only lead to emotional issues, but also loss of rights, among other issues. Incorrect listing may have occurred by omitting names of individuals, who should have been named as inventors in the patent application. On the other hand, incorrect listing may have occurred by including names of individuals, who should not have been named as inventors in the patent application. In any case, such lapse can be set right. 

Procedure for adding an inventor to a patent application

Section 28 of The Patents Act, 1970 deals with addition of inventor(s) to a patent application, and the corresponding rules are 66, 67, 68 and 69 of The Patent Rules, 2003. A request to add an inventor to the patent application can be made by any of the below listed entities, based on the circumstances.

  1. Applicant for the patent
  2. Applicant for the patent and the person who has to be added as the inventor
  3. The person who wishes be added as the inventor

1. Request by applicant for the patent

The applicant for the patent can make a request to the Controller to add a person as one of the inventors, if the person who has to be added as the inventor is also the applicant or is at least one of the applicants.

As best practice, it would be wise to submit to the Controller, consent of all the applicants, in case of joint applicants.

2. Request by applicant for the patent and the person who has to be added as the inventor

The applicant and the person who has to be added as one of the inventors can make a request to the Controller, if the person who has to be added as the inventor is neither the applicant nor one of the joint applicants.

3. Request by the person who wishes to be added as the inventor

The person who wishes to be added as the inventor can make a request by himself. Such a scenario might occur when the person in not an applicant for patent on record, and the applicant on record is not willing to make the request to the Controller. On receiving a request of this nature, the Controller will give notice of the claim and the statement made by the person to every applicant for the patent and to any other person whom the Controller may consider to be interested. The Controller may, if required, provide opportunity to be heard to any person to whom he had sent the notice, before deciding.  

Procedure for deleting an inventor from a patent or patent application

Section 28(7) of The Patents Act, 1970 deals with deletion of inventor(s) from a patent application, and the corresponding rule is 68 of The Patent Rules, 2003. Under Section 28(7), only those who were added as inventors as a consequence of the request(s) discussed earlier, can be removed. Such a request may be made by any person, and at any time. On receiving a request to certify that such a person should not have been named as the inventor, the Controller may, if required, provide opportunity to be heard to any person whom he thinks might be interested, before taking a decision.

The above discussed requests to add or remove an inventor should be made in Form 8 with the prescribed fee.

It shall be noted that, the Act does not have exclusive provisions for removing inventors who were named while filing the patent application. However, a petition can be filed by relying on sections relevant to inventorship to request the Controller to remove an inventor who was named at the time of filing the patent application.

Apart from addition or deletion of inventors, correction of names of inventors who are already on record is also possible. Such corrections may be required because of clerical errors while filing the patent application, or by reason of change in a person’s name. Request to make such corrections should be made using Form 13 with the prescribed fee. 

We hope you found this article informative. Feel free to contact us if you have any comments or queries.

 

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Adding or removing applicants from an Indian patent application

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Organizations often face situations wherein the names of applicants may need to be added or removed from an Indian patent application. The Indian Patent Act envisages addition or removal of applicants to occur broadly in three scenarios. The scenarios are dealt under Section 20 (1), (4) and (5), and the corresponding Rules are 34(1), 35(1), 36(1).

Section 20(1) and Rule 34 deal with a scenario wherein one or more applicants need to be added or removed by virtue of an assignment, an agreement or operation of law. The assignment or agreement has to be made in writing by the existing applicant of the patent. Further, in case there are two or more joint applicants currently on file, then consent of each of the joint applicants is required. In case a new applicant is being added, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to the rights of the existing applicant. Alternatively, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to an undivided share in the patent. The request for addition or removal of applicant should be accompanied with original assignment, agreement, an official copy or notarized copy for inspection by the Controller. The Controller may, at his discretion request further proof of title or written consent.

Moving on, Section 20(4) and Rule 35 deal with a situation wherein an applicant, among joint applicants, dies before the patent is granted. The surviving applicant(s) may request the application to proceed in their name alone. However, the application can proceed in the name of the surviving applicant(s) only if there is consent, to that effect, given by the legal representative of the deceased. The request must be accompanied by proof of death of the joint applicant and consent by the legal representative of the deceased. Additionally, documentary evidence to prove that the person giving the consent is the legal representative of the deceased applicant has to be provided. The documentary evidence can be in the form of a certified copy of the will of the deceased applicant or letters of administration in respect of the estate of the deceased applicant.

Section 20(5) and Rule 36 deal with dispute arising between joint applicants of a patent. The dispute may be related to whether the application should be proceeded with or the manner in which the application should be proceeded with. In case of such disputes, any of the applicants can make a request to the Controller seeking direction. The request to the Controller must be accompanied by a statement which fully discloses the facts which the applicant making the request relies on. The request must also set out the outcome or direction sought by the applicant. The Controller will send a copy of the application and the statement to every other joint applicant giving them an opportunity to respond. The Controller will also give all the concerned parties an opportunity to be heard, and then give direction as he thinks fit. The Controller may give directions to enable the application to proceed in the name of one or more of the parties, or to regulate further proceedings as needed.

An application to the Controller to add or remove applicants under the provision of any of the above discussed sections should be made in FORM 6 with the prescribed fee. The form is used for providing details such as, names of applicant(s) to be added or removed, names of original applicants and reason for change, among other details that are to be entered.

Form 6 may also be used to add or remove an applicant from an Indian national phase application where change in applicant has occurred after the international filing date, and the change is not reflected in a notification from the International Bureau (Form PCT/IB/306).

It shall be noted that adding or removing an applicant is not the same as changing or correcting the name of an applicant. In case of clerical errors or legal name change of a person or an organization, the change can be made using Form 13.

We hope you found this article informative. Feel free to contact us if you have any comments or queries.

We hope this article was a useful read. 

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Indian Government prepped up to expedite examination of increasing patent and trademark applications

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India is one of the fastest-growing major economy in the world. Further, India is fast emerging as a major market for research and technology driven products. Hence, over the years, the number of patent applications filed in India has soared. In the year 2015, India stood at 9th and 6th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively. Similarly, the number of trademark applications filed in India has soared over the years. In the year 2015, India stood at 2nd and 9th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively.

To handle and prosecute the increase in number of patent and trademark applications, the commerce and industry ministry has been augmenting manpower and is providing training to them. At the CII India-UK Tech Summit held in New Delhi, between November 7-9, 2016 the Joint Secretary in the Department of Industrial Policy and Promotion, Rajiv Aggarwal said that a year ago, the first examination of trademark applications was taking almost a year and half. In the month of November, 2016 the time for first examination of trademark applications has come down to around 4-5 months. By March 2017, it is expected that the first examination of trademark applications will come down to only one month. Similarly, for the first examination of patent applications it used to take approximately 6-7 years. It is aimed to bring down the first examination of patent applications to just 18 months by March 2018.

Conclusion:

It can be clearly seen that Indian patent office is striving to meet the expectations of stake holders when it comes to faster prosecution of the applications related to patent and trademark. Faster prosecution of the applications will lead to further increase the filing of patent and trademark applications, which is beneficial to the stakeholders and the patent office.

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Patent rejected for Pfizer Wonder drug

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Pfizer was denied a patent by Indian Patent Office for its wonder drug, XTANDI (Enzalutamide), effective for treating prostate cancer with a worldwide sale of 3 billion USD. Though this comes as good news to the consumers as the prices of the drug are expected to drastically reduce, there should not be a deliberate attempt to reject patent applications based on such intentions, which will only stifle innovation. The current market price of the drug is Rs. 3.35 lakhs for one pack containing 112 capsules accounting for a month’s dosage. The drug was developed at the University of California and was acquired by Pfizer when it bought the biotech firm Medivation. The drug is currently sold in India by Astellas Pharma.

The patent rejection was a result of pre-grant opposition proceedings filed by different entities such as BDR Pharmaceutical International, pharma company Fresenius Kabi Oncology and Indian Pharmaceutical Alliance (IPA) in addition to two more persons (Mr. Umesh Shah and Ms. Sheela Pawar). All these oppositions were filed at varying dates ranging from December 2012 to January 2016. The grounds of objection filed by the opponents varied, for example, BDR (Opponent 2) and IPA (Opponent 4) based their objections on grounds of lack of novelty [Section 25(1)(b)] in addition to other grounds whereas Fresenius Kabi Oncology (Opponent 1) opposed mainly on basis of Section 25(1)(e) which is the lack of inventive step.

The inventive step of the patent application was questioned by the Assistant Controller over US5411981 in light of US6518257 in combination with D1 (cited by Opponent 1 as J Med Chem. 2004 Jul15;47(15), 3765-16; A ligand-based approach to identify quantitative structure-activity relationships for the androgen receptors). The claim 3 of the application was found to lack inventiveness in light of US4097578. The final order, dated 8th November 2016, by Mr. Umesh Pandey, assistant controller Patents & Designs, read as, “in view of above instant application is hereby refused as the claimed invention is lacking inventive step under section 2(1)(ja) and also not patentable under section 3(d) and 3(e)”

Meanwhile, the attempts to reduce the prices of the drug XTANDI was also visible in US when various civil society organisations submitted a petition in January 2016 to the US National Institutes of Health (NIH) requesting for authorization of generic production of the drug, which was later rejected by NIH. 

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A guide for startups to obtain DIPP Certificate to Avail Benefits in the Indian Patenting Process

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In the month of May 2016, several amendments were made to the Indian Patent Rules, which enabled start-ups to avail expedited examination of their patent application. The amended Rules also set out the criteria to qualify as start-up. The Rules do not mandate certification by any government agency to qualify as start-up. However, the patent office has set-out an additional requirement, although questionable, for Indian entities to qualify as start-up. The additional requirement is not applicable to Non-Indian entities, and the patent office at present has not set out clear guidelines on how it would deal with Non-Indian entities claiming start-up status. Hence, Non-Indian entities may continue to meet the criteria as defined by the Rules to claim start-up status.

The patent office requires an Indian entity claiming start-up status to obtain a certificate from Department of Industrial Policy & Promotion (DIPP). The certificate may be obtained after the patent application has been filed.

The procedure below is only for applicants who have already filed a patent application and the same is published.

  1. Visit http://startupindia.gov.in/registration.php and fill in the details requested in the form
  2. Select “Patent filed and published in the Journal by the India Patent Office in areas affiliated with the nature of business being promoted”
  3. Against “Supporting document based on the nature of recommendation selected above”, upload journal extract of publication of your patent application
  4. Upload incorporation/registration certificate
  5. Against “Brief note on innovativeness of products /services offered by the entity”, upload a document in PDF format that provides details relating to the nature of business of your company and why products /services offered by your company is innovative
  6. With respect to tax benefits, note that, if you opt for tax benefits, your application will go to the Inter–Ministerial Board for evaluation, which may take time. If your aim is only to obtain benefits related to IPR, you can refrain from choosing the tax benefits option
  7. Submit the application upon self-certification

We hope you find this information useful to avail benefits offered in the Indian patent system to start-ups from across the world.

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Its Official – Section 3(D) is the Most Formidable Hurdle for Pharmaceutical Patent Applications in India

The Indian Patent Office has been vehemently using Section 3(d) of the Indian Patent Act to prevent innovator companies from evergreening patents. This section of the Act has been a matter of debate and deliberation over the years. While several multinational innovation companies have not left any stone unturned to show this section in bad light, social welfare groups swear by it. 

Till recently, it was only by way of experience and surrounding speculation, it was considered that Section 3(d) is one of the most formidable hurdles for pharmaceutical patent applications in India. However, the official number of pharmaceutical patent applications that were rejected using Section 3(d) is now out.

The Minister of Commerce and Industry under which the Indian Patent Office functions has officially presented these numbers. As per the official statement, in the past three years, 955 patent applications in the field of pharmaceutical have been rejected. Out of the 955 patent applications, 618 patent applications have been rejected by citing Section 3(d) as one of the grounds for rejection.

Hence, based on the last 3 years’ statics, it can be concluded that, 65% of the pharmaceutical patent applications are rejected in India by citing Section 3(d) as one of the grounds. The statics clearly indicate that the patent office is extremely wary of applicants attempting to evergreen patents, and such attempts will most likely be confronted with Section 3(d).

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Limited Requests for Expedited Examination of Patent Application in India

In the month of May 2016, several amendments were made to the Indian Patent Rules. The amendment introduced the option to expedited examination of patent applications, provided certain conditions are met. The amendment had also made it certain that the number of requests for expedited examination that will be allowed will be limited. Newly introduced rule, 24(C)(13), gave the Controller General of Patents, Designs and Trade Marks (CGPDTM) the authority to restrict the number of requests for expedited examination to be received every year.

Rule 24(C)(13):

Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

The CGPDTM, on June 14, 2016, has published a notification limiting the number of requests for expedited examination that will be accepted till December 31, 2016. As per the notification, the number of requests for expedited examination is restricted to 1000.

The Patents (Amendments) Rules, 2016 have come into force w.e.f. 16, May, 2016. In this regard the stakeholders and general public are hereby informed that in terms of provisions of sub-rule (13) of Rule 24C relating to expedited examination of applications, the number of requests for expedited examination to be received by the Patent Office on or before 31" December, 2016 has been limited to 1000 requests.   

At present, the patent office website does not provide a dynamic utility to display the number of requests that are available in real time. Hence, at the time of filing requests using the online portal of the patent office, one will be able to know whether the number has been exhausted or not. Alternatively, we believe that the CGPDTM will again have a notification published once the number is exhausted.

At the time of writing this piece, request for expedited examination could still be filed. However, considering that 1000 is a small number relative to the number of patent applications filed in India, we anticipate the requests to be exhausted within the next couple of month, if not before that.

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

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