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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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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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Expedited Patent Examination in India

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Introduction

The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

  • The patent applicant is a start-up
  • The patent applicant was a start-up at the time of filing the patent application
  • The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant is a start-up

The patent applicant has to be a start-up as defined by the patent rules to opt for expedited examination.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

  • The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.
  • The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66). 

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination. 

Fees for expedited examinationThe fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

fee structure

Converting ordinary examination request to expedited examination request

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below. 

Conversion to expedited exam fee

Expedited examination procedure

The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.

Flowchart for expedited examNote that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.

You may also download the article for your reference. 

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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The Indian Patent Office – A Cash Cow Left to Starve

India is fast emerging as a major market for research and technology driven products. One of the key indicators of this fact is the number of patent applications filed in India. As per a report from World Intellectual Property Organisation (WIPO), India stood at the 8th position leaving behind Canada in the year 2012, in quantum of patent application filings. With the steady increase in filing of patent applications, the revenue generated by the Controller General of Patents, Designs and Trademarks (CGPDTM), which is commonly known as Intellectual Property Office (IPO), has increased.

The IPO generated revenue of a little over 282.32 crores in 2012-13 compared to 269.25 crores generated in 2011-12. While the revenue has increased at a steady rate in the past few years, the IPO is all set to witness a sharp increase in revenue this financial year, thanks to massive increase in the statutory fee charged by the IPO for various patent filing, prosecution and maintenance activities.

Earlier the IPO had two slabs of statutory fee based on the category of patent applicants or patent owners. The IPO had two categories, i.e. “Natural Persons” (NP), such as individuals, and “Other than Natural Persons” (ONP), such as companies. The fee for the second category was 4 times of what was being charged for the first category. The IPO upon revision of its fee has made three categories, namely, NP, small entity (a legal entity who can be categorized as SME), ONP (a large entity – a legal entity who cannot be categorized as SME).  The revised fee charged for small entity is 2.5 times of what is be charged for NP, and the fee for ONP is 5 times of what is charged for NP.

One would realise that the manner in which the fee has been revised by the IPO has been rather smart if one were to look at data closely. The increased fee for NP is negligible considering the minuscule factor of the IPO fee in the entire patenting process. SMEs who were earlier complaining about being charged the same fee as was being charged for large enterprise have been granted relief by offering to charge 2.5 times of NP, as compared to 4 times of NP, as was being done earlier. Large enterprise however will feel the pinch of the increased fee, but they might have hardly any reason to complain considering remarkably high government fee charged by most countries, to which most of them are already exposed.

InvnTree - Patents - 1

The IPO has done remarkably well by pleasing the general masses of individuals and SMEs with its pricing structure, while cleverly making a killing, as the IPO generates majority of its revenue from companies who are categorized as large entities, who will now see a 100% increase in fee in most cases.

The IPO while being a cash cow generating impressive revenue, which is now set to increase significantly, spends a small percentage on its operations. In the year 2012-13, the IPO generated 282.32 crores and spent only 36.69 crores on its operations. The story has remained the same over the years.

InvnTree - Patents - 2

 

Even though the IPO generates revenue surplus year after year, it has failed to meet its sanctioned working strength over the years, which has snow balled into an operational crisis. For example, the sanctioned strength of patent examiners stands at 337, while the working strength is 201, falling short by 40%! Shortage of employees can be witnessed across various departments and posts at the IPO.

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One of the key indicators of the operational crisis at the IPO is the lag between patent application filing and issuance of patent application examination report by the IPO. At present, the lag is well over 48 months. In other words, a patent applicant has to wait for over 4 years after filing a patent application to receive an opinion on patentability from the IPO. A comparison of such lag in other countries indicates the dismal performance of the IPO.

This operational crisis may not be addressed even if the IPO were to meet its sanctioned working strength. The sanctioned strength is far too less to examine well over one lakh patent applications that have piled up over the years. Even if one were to ignore the pending patent application, the sanctioned strength is not even sufficient to examine patent applications that are currently being received. The IPO received 36247 examination requests in 2012-13, and in order to examine these within one year, each examiner (as per sanctioned strength) on an average will have to examine 107 patent applications in a year, which is not a feasible proposition reinforced by the fact that the IPO with 201 patent examiner clocked an average of examining 61 patent applications per year per examiner.

The IPO has done well in restructuring its fee structure, and patent applicants hope to see similar move by the IPO in restructuring its operations. Restructuring operations may include increasing its workforce and subscribing to initiatives such as Patent Prosecution Highway (PPH), which is a work sharing initiative between major patent offices across the world.  Such operational restructuring which is required to make the Indian market more attractive to investors will of course require extensive support from the newly formed central government which has come to power on the “development” plank.

Data for graph

IPO – Revenue Vs. Expenses

Year

Revenue (crores)

Expenditure (crores)

2009-10

215.25

33.03

2010-11

246.07

32.85

2011-12

269.25

34.93

2012-13

282.32

36.69

 

IPO Patent Examiners – Sancioned Vs. Actual

Year

Sanctioned strength

Working strength

2009-10

337

80

2010-11

282

79

2011-12

337

207

2012-13

337

201

 

Delay in issuing examination report

Country

Lag (months)

India

48

USA

18.6

Japan

20.1

Korea

14.8

China

11.5

Sources used for research:

http://ipindia.gov.in/main_text1.htm

http://ipindiaservices.gov.in/ferstatus/

http://www.uspto.gov/dashboards/patents/main.dashxml

http://www.fiveipoffices.org/stats/statisticalreports/2012edition/IP5statistics2012.pdf

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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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