The Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM), which is commonly referred to as the Intellectual Property Office (IPO), periodically invites stakeholders to share suggestions and issues concerning the operation of the IPO. Typically, IP practitioners attend such meetings and share meaningful views and suggestions. The IPO has been receptive of these suggestions, and in many cases act upon them.

One such stakeholders’ meeting was held on December 07, 2017. Several issues were raised, suggestions given, and clarification provided in the meeting. Subsequently, the IPO has summarized the issues raised and suggestions received from stakeholders, and the response from the Office of the CGPDTM. The summarizing document can be downloaded 

A total of 116 issues and suggestions have been listed with regards to patents and industrial designs, and a total of 37 issues and suggestions have been listed with regards to trademarks. Some of the noteworthy issues and response from the IPO are summarized below.

There were issues concerning examination reports not being emailed to the correct email address. The IPO has been sending examination reports and hearing notices via email. However, there were instances where these reports and notices were not sent to the correct email addresses. The IPO has acknowledged occurrences of such errors and has begun reissuing examination reports and hearing notices to rectify the errors that have occurred previously.

In case of industrial designs, there have been instances where line diagrams of the industrial design have not been accepted, and examiners have insisted on photographic representations. The IPO accepts that, in-principle, photographic representations are not mandatory to be filed, and has requested stakeholders to cite specific cases where photographic representations are being sought.

Further, in case of industrial designs, at present response to the examination reports must be filed offline. The IPO has informed that portal for submitting responses to examination reports has already been developed and is in the process of being implemented. Hence, we can assume that provision for online filing of responses is just around the corner.

With regards to examination of patent applications, the Act and Rules have been amended to enable expedited examination in certain scenario. One such scenario is when the patent application is filed by a legal entity, which can be considered a start-up. However, we have received contradicting opinion from Controllers of the IPO with regards to whether or not a Non-Indian entity can be considered a start-up. We are of the opinion that a Non-Indian entity can be considered a start-up. We have previously submitted exhaustive arguments in support of our views, and had a patent application from a Non-Indian entity examined under the expedited examination provision by the virtue of the applicant being a start-up. The IPO has now clarified that, applicants, irrespective of country of origin, are eligible for expedited examination under rule 24 (C).

The stakeholder meetings being organised by the IPO has had a significant role in refining the operations of the IPO and standardization of views and opinions across Controllers and offices of the IPO. We welcome suggestions or issues our readers would like to raise with the IPO, and we shall consider raising them in the next stakeholder meeting.

Hope this news was useful.

Regards,

Team InvnTree