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Indian Patent Office stakeholders’ meeting and action taken
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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.
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Regards,
Team InvnTree
Proactive steps taken by the Indian Patent office in engaging and addressing issues raised by stakeholders
The Controller General of Patents, Designs & Trademarks (CGPDTM) Office had called for a stakeholders Meeting on the 14th of December, 2016. The details of this meeting were published on the website on January 11, 2017.
There were a quite a few issues raised and suggestions received from the stakeholders at the meeting. Subsequently, the CGPDTM gave clarity on the steps being taken to resolve some of the issues and the improvement of some of the processes.
Some of the details are as follows:
Responding to a query on attorneys having to pay an exorbitant fee for their address change, CGPDTM responded saying that the prescribed fee had to be paid for changing the address. CGPDTM added saying that provision has been made for providing an additional email address.
Responding to another query on patent applications being abandoned even after filing a timely response, CGPDTM acknowledged the fault saying that the electronic entry of the timely response was recorded under incorrect category and that necessary action is being taken. CGPDTM also said that the wrongfully abandoned applications have been recalled.
Another important query was with regards to the inconsistency at the Delhi Patent office regarding the implementation of the CRI related guidelines. The CGPDTM said that a committee had been already formed by the Government to look into the issue and that the committee has already submitted their report.
Also, an enquiry was made at the meeting in relation to the newly introduced three-month extension in Patents Rules. The query was regarding whether the extension may be taken thrice for one month each or whether it should be taken at once for 3 months. The CGPDTM clarified that a single request for an extension, subject to a maximum of three months, is expected as per the rules.
Responding to the allegations of Controllers, in some instances, not examining the divisional application if the parent application has been rejected or withdrawn, the CGPDTM said that necessary directions are being issued to examine a divisional application in accordance with the Patents (Amendment) Rules, 2016.
The CGPDTM were also asked to explain their official stand on PPH (Patent Prosecution Highway), to which the CGPDTM responded by saying that the Government, at present, is not considering it.
The stakeholders were of the opinion that a notice period of two weeks for a hearing was too short. In response, the CGPDTM stated that instructions have been issued to increase the hearing notice, probably to 4 weeks.
Regarding a query related to expediting the examination of applications related to volatile technologies which have a short life, the CGPDTM said that technology-based expedited examination was not possible as per the existing rules.
Details of the issues and responses discussed at the meeting can be found here.
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