Patent (Amendment) Rule, 2019

Patent (Amendment) Rules, 2019

By Chandan Kumar, Patent Associate and Moumita Roy, Associate

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry has introduced Patent (Amendment) Rules, 2019 effective from 18th September, 2019.

Prior to the implementation, the authority had published the draft rule for suggestion and objections of the stakeholders. The basic changes brought about by the Patents Amendment Rules, 2019 are summarized for a ready reference as under:

  1. Transmission of documents by patent agents

The second change has been implemented in Rule 6(1) and that is:

Rule

Previous Rule

New Rule

Change

Rule 6(1A) …patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original: a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated The sentence “including scanned copies of documents that are required to be submitted in original” has been omitted.

Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.”

This means that going forward; the patent attorneys are not required to submit the originals of the documents required in original at the patent office within 15 days of the uploading of such documents on the electronic server of the patent office. Instead, they are required to submit the originals when asked so by the patent office that too within 15 days of such asking.

  1. Documents for small entities and startups

The next change has been implemented in Rule 7 Proviso (ii). The change has broadened the scope of

Rule 7 – Second provision …Provided further that in the case of a small entity, every document, for which a fee has been specified, shall be accompanied by Form-28 “Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.” Provision amended to include startup along with the small entity
  1. Expedited Examination

A major change brought about by the new rules is that now in addition to startups and applicants designating India as ISA or electing India as IPEA in their corresponding PCT applications, the option of seeking expedited examination is now available to a wide category of applicants. According to the Patents (Amendment) Rules, 2019 rule 24 C is substituted to read as follows:

Rule 24C Only

i) startups &

ii) applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application allowed to file a request for expedited examination.

Entities allowed to file a request for expedited examination:

1.      startups;

2.  applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application

3. Small entities / MSME’s;

4. Female applicants/co-applicants;

5. Departments of the Government;

6. Institutions owned or controlled by the Government by way of State/ Central legislature;

7. Institutions wholly or substantially financed by the Government;

8. Government companies as under the Companies Act;

9. Application pertaining to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government; and

10.  Applicants of those countries whose patent offices are in an agreement/arrangement with the Indian patent office.

Eight new classes of applicants can file a request for expedited examination.

Accordingly, the expedited examination scheme is extended to a new set of applicants. These include Medium Small & Micro Enterprises or MSMEs, applications with female applicants/ co-applicants, Government departments, Institutes owned or controlled by the government, and government companies.

In addition, the expedited examination has been extended to certain sectors which the government may notify from time to time as priority sectors. Applicants in priority sectors may be taken up on priority by the patent office, if the applicants so choose.

Moreover, the scheme is also now available to patent applicants of the countries where the Indian government has a special arrangement with a foreign patent office. See point 10 above. Initially, the draft rules had suggested that such priority in the examination will only be applicable in case of applications filed in India through PCT route. However, the notified rules have extended the scheme to non-PCT national phase applications also.

 At present, the Indian government already seems to have a special arrangement with Japanese government in this regard. That means that Japanese companies that have got a favorable grant at the Japanese patent office may ask for expedited examination in India.  

  1. Transmittal fees and Certified copy fee no longer applicable

Under the new rules, PCT applicant will no longer have to pay a transmittal fee to the Indian patent office when filing PCT applications through the e-PCT filing module. The transmittal fee previously ranged from ₹ 3200 Rupees to ₹ 17600 depending on the nature of the applicant and the mode of filing the PCT application.

On the other hand, individuals and Startups paid ₹ 3200 when filing the PCT through the ePCT filing module, small entities paid ₹ 8000 and large entities would shell out ₹ 16000. These fees have now been scrapped. If however, the PCT application is filed physically with the patent office, the same fees as earlier would applicable. The change reads as under:

FIRST SCHEDULE – Entry 48A Transmittal fee for International application (for ePCT filing). Individuals & startups – 3200 INR

MSME’s – 8000 INR

Large  entities/ 16000 INR

No fee payable 48A inserted after entry number 48 – Transmittal fees for ePCT filings no longer payable
  1. No fee is payable in Procuring DAS code and transmitting priority document electronically has been

First Schedule of the amended rule has made in the Rule 49A which looks like as under:

FIRST SCHEDULE – Entry 49A For the preparation of a certified copy of the priority document and e-transmission through WIPO DAS.

Individuals & startups – 1000 INR + 30 INR per  extra page in excess of 30

MSME’s – 2500 INR + 75 INR per extra page in excess of 30

Large  entities/ ONP -5000 INR + 150 INR per extra page in excess of 30

No fee payable 49A inserted after entry number 49 – No fee payable for procuring DAS code and transmitting priority document electronically
  1. Changes to the format of Form 18A

Changes have now been made to the format of Form 18A to include the entire category of applicants to whom expedited examination is now available along with the documents that each of these types of applicants would have to adduce at the time of making the request.

SECOND SCHEDULE – Form 18A Only startup and applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application identified in Form 18A 8 additional categories  of applicants added to Form 18A NA

We will be covering some of the aspects of new rule changes in our further articles.

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Analysis of Recently Published Annual Report of Indian IP Office

Analysis of Recently Published Annual Report of Indian IP Office

By Kshitij Malhotra, Partner

                In July this year, the Office of Controller General of Patents, Designs & Trademarks or CGPDTM, the administrator of Indian IP Offices, issued its annual report for financial year 2017-2018[1][2]. The report is considered by many as one of the authentic sources of information about developments of IP in the country, and despite coming out a year after completion of the concerned fiscal, the report is widely awaited. The present report of 2017-18 fiscal is significant, as it is first official account, after the Indian IP offices undertook major administrative reforms in fiscal year 2016-17. The instant article investigates some key information reflected in the report.

                Context of the present report

                Just to give the readers a context of the significance of this report, the growth of number of IP filings in India has been stagnant for last 5-6 years. Many have attributed the main reason of the sluggishness to be the delays in examination and granting IP rights. Some reports, as recent as 2017, suggested that around 232,000 patent applications lay pending at the IP offices[3].

                It is interesting to note that in year 2014, plagued by the problem of pendency of its patent applications, Japanese corporation, NITTO DENKO[4], had sued the Indian government for delays in patent grant procedure. The High court of Delhi looking into the matter ordered formation of a high-level committee to investigate the problem. The committee recommended various emergency administrative reforms in the Indian IP set up.

                Accordingly, in fiscal year 2016, the government implemented various changes[5][6]in the rules governing IP registration. Some of these reforms included reducing the statutory acceptance period of patents by half, improving e-filing systems for filing IP applications, change of opposition procedures, increasing the strength of patent & trademark examiners, centralizing examination process, coordinating allocation of patent & trademark applications among the four branches of the IP offices in a better manner, and other similar reforms.

                Although it is little farfetched to anticipate that the 2017 fiscal data would have been significantly influenced by the measures taken in preceding fiscal, still it will be interesting to analyse the data to locate any positive indicators that augur well for users of patent & IP system of the country.

                Overall Filing Trends of Patents, Designs & Trademarks

                The charts below show the overall filing & issuance trends at the Indian IP offices in 2017 fiscal year as compared to last 5 years.

Chart 1: Overall IP filing trends at Indian IP office

                As you can see, the overall number of filings in fiscal year 2017 has remained almost same as compared to 2016 fiscal. In 2017-18, 46,846 patent applications were filed, which increased marginally by around 3 percent only as compared to 2016 fiscal. Similar marginal growth is observed in design and trademark applications. The story seems little better when it comes to number of issuance of IP rights.

Chart 2: Overall IP registration trends at Indian IP office

                As seen in Chart 2, the data for number of IP registrations shows that the number of IP rights issued to various applicants increased reasonably in 2017 fiscal. The number of granted patents increased by 32.4 percent, while the number of design registrations increased by 21 percent. The number of trademark registrations also shows a significant increase of around 20 percent.

                Looking at the data, it is fair to conclude that the administrative reforms in 2016 fiscal, do not seem to show a significant early impact on the IP filings scenario in the country. However, they do seem to suggest more effectively towards the patent offices working effectively to resolve the backlog. This is in consonance with the feeling among IP practitioners in India, who have observed a markable improvement in working of the IP offices on the ground.

                Since the suggestions of the committee instituted post NITTO DENKO ordered a special focus on reforms in patent examination and grant procedure, the next part of this article analyses the fiscal data of 2017 to identify deeply the potential impact of the 2016 reforms[7]on patent examination in the fiscal.

                Trend of Patent Filings by Foreign Applicants

                As you might be aware, in India, around 70-80 percent patent applications are filed by foreign applicants. Since one of the majority users of the patent system in India are foreign applicants, it would be interesting to see impact of the 2016 reforms on foreign companies filing in India? The chart below shows the filing trends based of Paris Convention and PCT applications in India.

Chart 3: Trends of no. of applications filed through PCT/ Convention route in India in last 5 years

                As shown in chart 3, the PCT/ Paris Convention applications form a major share of the patent filings in India. Further, the trends indicate that the number of applications remained almost same in fiscal 2017, as compared to previous year, i.e., fiscal 2016. Again, the trends are early indicators, but, seem to show no significant immediate impact of the reforms of 2016 on the patent filings from foreign applicant.

                Such a trend could be indicative of various factors in play. The first being that the foreign applicants, who started to use Indian patent offices extensively post the 2005 landmark reforms which introduced many changes like product patent regime, allowance of pharma patenting and the like, might be on standby mode to see real impact of the recent reforms before starting to use the system again. 

                The next set of trends look into comparing the number of applications filed from companies of top 5 patent offices, at the Indian patent office. Three sets of data are looked into keeping the Japanese perspective in mind. The first is comparing trends of Japanese applicants in India verses their American and European counterparts. The second is comparing the trends of Japanese applicants in India with their Korean and Chinese counterparts. The third set of data is identifying the top foreign applicants filing patent applications in India.

Chart 4: Trends of no. of applications filed with Japanese, American and European applicants in India in last 5 years

Chart 5: Trends of no. of applications filed with Japanese, American and European applicants in India in last 5 years

                It should be noted that the American and European companies majorly filed in India between 2005 and 2015, followed by Japanese applicants, who started to file in India majorly after year 2008. However, from the charts above, the trends seem to indicate that the number of applications from Japan have in fact decreased in last 5 years. This trend is also seen among American and European applicants, i.e., applications with US and European priority in India have decreased.

                Nevertheless, the main reason for the decline of patent filings from Japan, US and Europe seems to be indicative of many factors. A first factor could be degrading of economic activities of these countries in India. The other factors could point towards persisting negative sentiments of Japanese, European and American corporations on the IP ecosystem in India. However, Foreign Direct Investment data or FDI data seem to point towards the latter rather than former.

                On the contrary, the data in chart 5 seem to indicate an increased patent filing from China and Korea at the IPO in recent years. As shown in chart 5, the patent applications from Korea have increased, while those from China remained constant but increased overall since 2013. The increased filings could generally point towards higher economic activities in these countries among various other reasons. The other could point towards special significance of the companies in these countries towards economic activities in India.

                The chart 6 below summarizes the top 10 applicants at the IPO in fiscal year 2017.

Chart 6: Top 10 foreign applicants at IPO in 2017-18

                The trends indicate that although the greatest number of patent filings in India are from American applicants, big European corporations seem to have overtaken the Americans in taking the top spots. It is interesting to note that two Japanese corporations, Mitsubishi Electric and Honda Motors, also feature in top 10. Their increased filing in India could be attributed to increased economic activities of Japanese corporations in India in recent years.

                Trend of Patent Examination in Fiscal 2017-18

                A part of patent reforms in year 2016 focused especially on hiring junior examiners in order to build a higher capacity at the patent offices. Accordingly, since then the patent offices carried out special recruitment drives to hire examiners, and train them to assist various patent examiners at the patent offices. The annual report data of 2017 fiscal reflects the above fact. The data shows that at present more than 550 examiners work at the Indian patent offices, and the number of examiners at the patent offices are more than 5 times the number in 2015 fiscal.

Chart 7: Examiner strength at Indian patent offices

                The patent examination system in India now involves both the junior and senior examiner, called Controllers, working in tandem. While the junior examiners carry examination of patent applications and prepare examination reports called FERs, the controllers review them before sending to the applicant. It is believed by the patent offices that by increasing the strength of junior examiners, the senior examiners or the controllers could focus better on ensuing the quality checks of the examination report. Accordingly, it will be interesting to note if the 2017 fiscal data point towards any relation between increased capacity and the rate of office actions [examination reports] issuance?

                The chart no. 8 below shows the trends of examination of patent applications at the Indian patent offices. More specifically, the data shows the no. of applications that were examined [issued first office actions or first examination reports] and disposed, that is decided [accepted or rejected] by the IPO.  

Chart 8: Trends of no. of applications examined [OA issued] V. disposed

                As seen from the chart 8, the number of first OAs issued every year by Indian patent offices has increased considerably to more than three folds the number of OAs issued 5 years back. Similarly, the number of cases disposed [either accepted or rejected by IPO] has also increased four times as compared to the cases disposed 5 years back. This data could be indicative of a positive development for clearance of backlog of patent applications. And if the trend continues, which many IP practitioners see are in continuity, it could augur well for the IP ecosystem in India.

                Commercialization of patents

                As you might be aware, the Indian patent laws are based on a premise that a patentee is granted exclusive rights vide patents in India on condition that they would commercialize their invention in territory of India. Accordingly, Indian laws require patentees to furnish annual statements with regards to the commercialization of their patents. This is also called as “working of patents” requirement.

                The patent office annual report publishes yearly data regarding working of patents in its annual report. This edition of the report is no exception. In fact, the commercialization information of patents seems to show some interesting facts. The chart no. 9 below shows the Form 27 [the reporting form of the annual statement] information.

Chart 9: Form 27 [Working of patents] data of last 5 years

                The chart 9 shows that, firstly there seems to be growing tendencies among patentees in not reporting the Form 27 information. The second seems to be that more companies are in fact reporting that their patents are not worked or commercialized. This information could point towards the fact that foreign companies might not be actually increasing their technological transfer in India, something that could be worrisome in longer run.

                Conclusion: The IPO came out with its annual report for fiscal year in July 2019. The report is first official account of filings at Indian IP offices post the IP reforms introduced in fiscal year 2016. An analysis of the early trends from the data published in annual reports seem to point towards the fact that the reforms do not seem to have an instant effect on the growth of IP filings. Although, it should be noted that the number of IP registrations and examination of patent applications seem to have increased notably. The applicant data shows that the number of applications from foreign applicants seem to be same as compared to fiscal year 2016. The number of applications filed by Japanese corporations have in fact reduced. On the other hand, those from Chinese and Korean companies have increased in last few years. The top 10 applicants are dominated by European corporations, however, there seems to be a trend that more and more companies are tending towards not commercializing their patents in territory of India.


[1]Indian financial year is from 01st April to 31st March of succeeding year

[2] Full 2017-18 Annual Report available @ URLhttp://www.ipindia.nic.in/writereaddata/Portal/IPOAnnualReport/1_110_1_Annual_Report_2017-18_English.pdf

[3]https://economictimes.indiatimes.com/news/economy/policy/2-32-lakh-patent-applications-pending-with-patent-office/articleshow/62269712.cms?from=mdr

[4]http://delhihighcourt.nic.in/dhcqrydisp_O.asp?pn=202118&yr=2014

[5]Patent Amendment Rules of July, 2016 available @ URLwww.ipindia.nic.in/writereaddata/Portal/IPORule/1_42_1_Patent__Amendment_Rules_2016_16May2016.pdf

[6]Trademark Amendment Rules of July, 2016 available @ URLhttp://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_312_1_TRADE_MARKS_RULES_2017__English.pdf

Expedited cases
Expedited Examination in India
Expedited Examination in India
Expedited Examination in India

Expedited Examination System in India and its Possible Effects on Foreign Applicants

Expedited Examination System in India and its Possible Effects on Foreign Applicants

By Vijeth Bhat, Patent Associate

In the newly amended Patent Rules 2016, considerable emphasis was given to establishing an expedited examination regime. There were certain provisions regarding filing expedited or accelerated examination in which the application is supposed to be taken out of the normal queue and examined.

Although these provisions have been directly proposed for startup companies, interestingly, big Indian corporates also stand to gain from these provisions. Especially, companies, who have filed a corresponding PCT application with India as the International Search Authority (ISA) or International Preliminary Examination Authority (IPEA), could also use this route to expedite the examination of their corresponding domestic patent application.

The expedited examination procedures suggest a patent grant within a time frame of 12-15 months of submitting such expedited request. The condition being that the applicant must satisfy the criteria mentioned above, i.e.,

  1. the applicant should be a startup company or
  2. the applicant should have selected India as an ISA or IPEA at the international stage.

It is believed that the IPO will extend the expedited examination provisions to foreign applicants as well in future.

An applicant may file a request for expedited examination in Form 18A along with the fee of Rs. 8,000/- for individuals and startups. 25,000/- for small entity and Rs. 60,000/- for others.

The newly amended patent rules also allow applicants who have already filed a Request for Examination (RFE) under rule 24B (in Form 18) to convert it into a request for expedited examination under rule 24C (1).

Below table shows some of the recent cases that were granted in Expedited Examination Procedure:

Expedited Examination in India

Nevertheless, above trends are showing that the patent office is issuing first OA within 4-6 months of submitting the request for expedited examination to domestic Indian companies. This has been unprecedented and a positive step for expediting the patent grant in India.

 

Implications of Expedited Examination for Foreign Applicants

Department of Industrial Policy and Promotion (DIPP) has amended Patent Rules 2003 with effect from 1st December 2017 called as the Patent (Amendment) Rules, 2017[i]

According to the Patent (Amendment) Rules, 2017:

(i) “Startup” means

(a) an entity in India recognised as a startup by the competent authority under Startup India initiative,

(b) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/ registration as per Startup India Initiative and submitting declaration to that effect.

Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.

Previously, the foreign startup entities were not considered to be eligible to file a request for expedited examination. With these amendments in the rules, foreign applicants that are startups can now obtain patents expeditiously as they will now be eligible to file a request for expedited examination.

The new expedited examination mechanism might lead to Indian competitor companies getting an advantage by getting early patents and using them against foreign competitors. In light of the expedited examination system, the foreign applicants could look into possible transferring IP rights of specific technologies to Indian subsidiaries and first filing in India as a way to obtain early patent rights, if needed in some specific cases.

Disclaimer: The above article should not be constituted as legal opinion.

 

 

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Filing your Patent outside India – Be Cautious of the Foreign Filing Restrictions

 

 Filing your Patent outside India – Be Cautious of the Foreign Filing Restrictions

By Garima Rai, Senior Associate

Over last few years, more and more Indian applicants are applying for patents outside India. This trend is shown by the increase in the number of patent applications filed by Indian nationals at the US Patent & Trademark Office[i], the nodal office granting patent rights in the US. The charts below show the stats of patents filed by and granted to Indian nationals at the USPTO. Interestingly, the number of patent applications filed by Indian nationals in the US these days is comparable to the number of domestic patent applications filed by Indian nationals at the IPO[ii].

Source: USPTO Annual Report

 There could be many reasons for such selection. One of the reasons could be the essential market of the product embodied in the patent. Another reason could be faster patent prosecution. In comparison to rest of the world, the patent prosecution time is generally much lesser at the USPTO. Typically, the first office action is issued within 12-18 months from the filing of a patent application at USPTO.

Another important factor that affects the decision of the applicant to first apply for patent in the US might be domain of the technology. Although the criteria regarding patent eligibility are becoming stricter in US as well in light of landmark cases like Bilski v. Kappos[iii], Mayo v. Prometheus[iv], and Alice Corp. v. CLS Bank International[v], the general feeling is that the USPTO considers most of the inventions as patent eligible unless it specifically falls under excluded subject matter. This might also be true for software inventions, which are generally patent ineligible subject matter in many countries including India. In comparison, software inventions are usually patentable at the USPTO, provided the software invention qualifies the various tests laid out by US Supreme court.

Accordingly, the US is a destination of choice for India’s huge IT/ software sector to file for patents. Not to forget, the ever-growing patent market of the USA has always bestowed a competent opportunity to the patentee to exploit patent rights to their advantage.

In-house captives in India

 It is also very interesting to know that many multi-national corporations including American ones have been using their technology centers in India to add to their patent portfolio worldwide. These companies use the technology staff at their Indian centers to create solutions and directly file application for patents outside India, especially the US to protect their innovation. Some of the notable companies, which have been actively working on such model in India, are General Electric (US), Honeywell (US), Accenture (US), Google Inc. (US) and Motorola (US). Below are the data showing the number of patents granted and the number of published patent applications at the USPTO (where one or more inventors have Indian nationality) for these companies in last 5 years.

Table showing the number of patents granted and published patent applications with at least one inventor with Indian nationality; *Source: WIPS

First Filing outside India and the Implications of Section 39 of the Indian Patents Act

According to provisions in Indian Patent Laws, the Indian statutes do not provide unrestricted rights for directly foreign filing patents outside India. According to Section 39 of the Indian Patents Act,

(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed:
 Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Therefore, the provisions of Section 39 require applicants to obtain a foreign filing license or first file their patent in India. This forces multinational companies operating in India having captive units in India to be cautious when a patent application for protection of an invention is first made directly outside India. The provisions require them to obtain a foreign filing license (FFL) from the Indian Patent Office or first file their application in India. Since filing Indian priority application could lead to complications in foreign prosecution, most often these companies would find the provisions of applying for a foreign filing license as more practical and appealing.

Repercussions of not following Section 39

In case an applicant does not follow provisions of Section 39, he/she may face the penal provisions under Section 40, which could lead to revocation of their corresponding patent in India. Below is the quoted section from the Indian Patents Act:

Section 40

Without prejudice to the provisions contained in Chapter XX, if in respect of an application for a patent any person … makes or causes to be made an application for grant of a patent outside India in contravention of Section 39 the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under Section 64.

According to Section 40, if a person has not complied with the requirements under Section 39, then any corresponding Indian patent application shall be treated as abandoned. In case, a patent has already been granted, it is liable to be revoked under Section 64[vi].

In addition to the above, there are penal provisions of serious nature when the requirements under Section 39 are contravened by a person. As stated, Section 118 recites as follows:

Section 118

If any person ….. makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

The provisions clearly state that if a person has contravened the directions under Section 39, he shall be punishable with imprisonment for a period extendible to TWO years, or fine, or both. The Indian system is crucial and secretive about inventions developed within the Indian Territory unless the invention passes the test of secrecy. If you are a company, it is better to obtain a license than have a punitive action taken against the management later on.

Obtaining FFL in case of directly filing a PCT application:

One of the questions that are also commonly asked is the applicability of Section 39, in case the applicant is desirous to file the first application as a PCT application. This question was discussed in famous case law named Puneet Kaushik V. UOI[vii].

In this case, the applicant had applied for PCT (India as the Receiving Office) and submitted an application for foreign filing license under Section 39 simultaneously at the Indian Patent Office. Among the two, the application for the license was accepted and taken on record by the IPO whereas the PCT application was not. However, the patent office later accepted the PCT application and gave a later filing date after grant of the foreign filing license to the applicant.

The applicant filed an appeal at the Delhi High Court demanding the PCT application to be accorded the same date as the application date for obtaining foreign filing license. The applicant argued that since the PCT has been filed with India as Receiving office[viii], there should not be any need of obtaining the foreign filing license at the first place. Therefore, the PCT application should be accorded the same date as the foreign filing license application date.

But it was argued by the IPO that even if the PCT application is filed at the Indian Patent Office with India as the receiving office, the application is forwarded to WIPO which is an International body and the applicant is required to wait for the issuance of foreign filing license. The permission to file patent application outside India is generally granted by the IPO within 21 days from the date of such request by the applicant. To this, the court held:

“The legal consequences flowing from a PCT application filed in the Indian Patent office are that of an application filed outside India. The Receiving office is only empowered to assure that a PCT application is in conformity with all the prescribed documents under the treaty. All further processing is done by the International Bureau and the International Searching Authority.”

Therefore, it is essential on part of the applicant to understand and be cautious while filing a first application as a PCT application to avoid rather burdensome implications of Section 40 and Section 118.

Obtaining FFL in case the invention is conceived outside India:

A question that is asked commonly is the applicability of Section 39 to inventions conceived by Indian residents outside India. Interestingly, in Section 39, the sub-section 3 states that if the application for patent has been filed outside India by a person resident outside India, the requirements of sub-section 1 shall not apply. It is to say that if an inventor is of Indian origin and residing at the US, has invented his invention in the United States, and has filed a patent application at the USPTO, then the provisions of Section 39(3) preclude them from seeking permission from the Indian Patent Office. Accordingly, FFL from India is not required for inventors working for companies abroad for inventions conceived out of India.

Obtaining FFL in case the inventor (s) is/are Indian residents, the applicant is non-Indian & the application is made outside India:

There are situations when an inventor is an Indian resident but has assigned his invention rights to a foreign entity. Global MNCs have their R & D departments at multiple locations across the globe. They are often desirous to file application for a patent in their home country when the inventions are developed outside home country, say in India. The question is whether in such cases, the Indian resident inventor or the assignee is liable for obtaining foreign filing license from the IPO?

It should be noted that the provisions of Section 39 require any person making or causing to make an application outside India to obtain permission for routing the invention outside India in order to apply for a patent. The foreign assignee might argue that since he/she is not resident in India, the provisions of Section 39 do not apply, and he might be correct.

However, such assignment does not devolve the duty of the inventor as he/she could be construed as the one causing the application to be made outside India by way of assignment.

Therefore, the inventor should insist the assignee or apply himself and get the FFL before the patent application is filed outside India.

Obtaining FFL in case of joint research between Indian resident inventors and non-resident inventors:

An invention is often a result of joint research between Indian resident inventors and non-resident inventors. An inventor residing at India and an inventor residing at say Singapore may develop an innovative product working at R & D department of a company located at India and Singapore respectively. It may happen that the applicant company foresees better market opportunities at United States and is keen in obtaining exclusive patent rights in US rather than in India or Singapore. The applicant company should then file a patent application at the USPTO. In such situations, the question is whether the India residing inventor must seek permission from the IPO before the patent application is filed at the USPTO?

The answer to this question is similar to the answer in case of assignment. That is even though the assignee might be non-resident of India, the Indian inventor could still be considered to be causing an application to be made outside India without following the due process of law. Accordingly, the inventor should insist the assignee or apply himself and get the FFL before the patent application is filed outside India.

Patent rights are territorial in nature and every country follows its own procedure for protection of rights. It is essential to understand the practice followed. As described above, non-compliance of laws may lead to penal consequences and revocation of patents in some countries. Even though, Indian applicants can find good business opportunities by obtaining patent rights for their inventions outside India, they should be cautious of the foreign filing restrictions as some of the restrictions are of punitive nature. Similarly, captives of various multinational companies may see a lot of benefits in using the Indian technical workforce to add to their global patent portfolio, but they should not forget to follow proper compliance when first filing their applications outside India.

If there are specific queries, please write to us at mail@gip-india.in .

 

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Decoding Patent Marking Provisions in India

Decoding Patent Marking Provisions in India

By Kshitij Malhotra, Partner and Garima Rai, Senior Associate

Introduction

With the fast paced growth in technologies in today’s world, patents are considered as essential for corporations as well as individual inventors or applicants.

It is known that the general purpose of a patent is to provide exclusive right to the patent owner for manufacturing and selling a patented product. Going by the definition, patent marking relates to making the general public aware of the fact that a product has been patented or a patent has been applied for the product.

When a person applies for a patent or has been granted a patent, it becomes very important to protect its rights on a product, as well as the rights of the competitor to know that a patent exists on that product by making the public aware that a patent has been granted on it.

Provisions of Indian Patents Act, 1970

According to Indian Patents Act[i], a person who has been granted a patent may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.

If a patent is yet to be granted, the patentee may use words such as “patent pending” or “patent applied for”.

Patent marking not only creates awareness about the patented product to the general public but also constructively informs the infringer who has a similar product and is involved in the act of infringing on patentee’s product.

According to Section 111[ii] of the Indian Patents Act, in the event of failure to mark, the patentee cannot claim for any damages in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. In other words, marking a product being covered by a patent is essential when it comes to obtaining compensation from potential infringers.

However, there are chances of innocent infringement when the infringer is not aware of the patent. In such cases, patent marking plays a major role. If a patent is marked along with the patent number or with the patent application number quoting “patent applied for”, then there arises very less chance for infringement.

Summarizing the purpose of Patent Marking as below:

  1. Helping to avoid innocent infringement;
  2. Encouraging patentees to give notice to the public that the article is patented; and
  3. Aiding the public to identify whether an article is patented.

Types of Patent Marking

To satisfy the marking requirements, a patented article must be marked either with the word “patent” or the abbreviation “pat.,” together with the applicable patent number. Where an article is already on the market and a patent covering it is issued later, the patentee is required to update the mark to identify the patent number of each newly issued patent. There are basically two types of patent marking as explained below:

Physical Marking

Physical marking relates to physical printing of the patent application number or the patent number along with “patent applied for” or “patent” on the product. Such an example is provided in Fig. 1. There exists wide range of products which contain such marking of the patent number such as medicines, ointments, hair cleansers, mechanical devices etc.

There are situations when a patent is yet to be obtained for a patent application which has already been marked and product is sold in the market. Once, a patent is granted for such product, the patentee is required to amend the marking on its products by replacing the patent application number with the patent number.

However, it will be appreciated that updating physical marks in such situations can result in additional manufacturing costs, due to retooling of manufacturing processes or development of new product moulds to include new patent numbers on the products or to delete inapplicable ones. The magnitude of the additional costs is difficult to ascertain reliably given the lack of empirical data regarding the impacts of physical marking on manufacturing processes, but several public commenters noted that it is costly to make changes to a product.

Virtual Marking

In this era of versatile internet and easy access to information across the globe, if the patent information is put on respective websites, the public would certainly get the knowledge for existence of such patent. This introduced the concept of Virtual Marking. Virtual marking allows patent owners to effectively mark their products with a single “virtual patent marking” comprised of the word “Patent” (or “Pat.”) together with a URL address accessible to the public that associates the patented article with the number of the patent.  This benefits companies by not having to update moulds every time they are granted a patent for a product. An example of such virtual marking is provided in the adjacent Fig. 2.

Although, virtual marking holds high importance when compared to physical marking, Indian provisions are directed to stamping, engraving or impressing of patent application no. or the patent number on the product. The teachings of the Indian Patent Law are reticent on virtual marking. However, it is believed that with growing number of patent applications being filed at the Indian Patent Office and the growing number of patents being granted, the concept of virtual marking should be instigated as an alternative way to patent marking.

False Patent Marking

A patentee can mark his patented product with the patent number; however, there is a word of caution. There could be cases when a person who is not a patentee or does not own a patent, puts up a false patent number information marked on his product with the intention of earning benefits from such marking.

The Indian Patents Act[iii] puts a restriction to a person to false mark a product with a patent number when the product has actually not been patented. According to Section 120, if a person represents on his product that it has been “patented” in India or a “patent has been applied for”, the person is considered to be punishable with a fine of up to INR 100,000/- (~1500USD).

Conclusion

It is evident that the Patent Marking law has not mandated any duty on the patentee. However, if patentees diligently follow the law, patent marking can prove to be a good marketing and a quality source tool. It also satisfies the authenticity and genuineness of the product. India is growing in the field of innovation and technology and it is believed that strict implementation of such laws will certainly reduce infringement, thereby benefitting the common public.

***


End Notes:

[i] Explanation 2 in Section 120 as provided below

[ii] Section 111, The Patents Act 1970:

Restriction on power of court to grant damages or account of profits for infringement. –

(1) In a suit for infringement of patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

Explanation. -A person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question.

[iii] Section 120, The Patents Act 1970:

 

Unauthorised claim of patent rights. -If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to [one lakh rupees].

Explanation 1.-For the purposes of this section, a person shall be deemed to represent-

(a) that an article is patented in India if there is stamped, engraved or impressed on, or otherwise applied to, the article the word “patent” or “patented” or some other word expressing or implying that a patent for the article has been obtained in India;

(b) that an article is the subject of an application for a patent in India, if there are stamped, engraved or impressed on, or otherwise applied to, the article the words “patent applied for”, “patent pending”, or some other words implying that an application for a patent for the article has been made in India.

Explanation 2.-The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, as the case may be, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India.

 

 

Revised CRI Guidelines by Indian Patent Office

Revised CRI Guidelines by Indian Patent Office

By Kshitij Malhotra, Partner and Garima Rai, Senior Associate

On 30th June 2017, the Indian Patent Office introduced a fresh set of CRI Guidelines[i] for examination of Computer Related Inventions (CRI). Notably, this is the third set of guidelines issued by the Indian Patent Office in last three years. The previous two versions were introduced on 21st August 2015 and 19th February 2016 respectively. In the newly introduced guidelines, IPO has introduced changes in comparison to the earlier versions for examination of computer related inventions.

Determination of excluded Subject Matter:

It has been a matter of debate for patentability of Computer Related inventions in India. The issue of patentability arises when an invention involves computer software. In their previous guidelines of Feb, 2016, the Patent Office had mandated the presence of novel hardware to claim protection for the computer software involved therein. This was a complete reversal of guidelines of Aug 2015 in which the Patent Office has suggested that computer programs are patent allowable subject matter, and the allowability of a particular software program would depend on whether there is any technical effect of the software program claimed.

In the new guidelines, the requirement of novel hardware has been eliminated from the patentability requirements. In the new guidelines, although it is clearly mentioned that the Section 3(k)[ii] excludes mathematical methods or business methods or computer programme per se or algorithms from patentability, the patent office has emphasized that invention should be examined and judged to its entirety or as a whole.

Emphasis has been added to the underlying substance of the invention and not in the manner of its presentation. The guidelines also specifically describe the various possible ways of presentation of computer related inventions such as method/process, apparatus/system/device, computer program product/ computer readable medium. The technical advancement over the existing prior arts must be judged keeping the claimed invention as a whole and not into its way of presentation.

Accordingly, these guidelines are little closer to the Aug 2015 guidelines than the Feb 2016 guidelines. Unlike the Aug 2015 guidelines, the new guidelines are bereft of any examples or any concrete criteria on evaluation of patentability of software patents.

The present guidelines should prove to be beneficial and hopeful for applicants with inventions falling in the vicinity of computer related inventions. However, the biggest disappointment from these guidelines is the absence of any case examples or listing on specific criteria to judge whether the invention’s subject matter is patent allowable? The absence of specific criteria would encourage disagreement between the Patent Office and patent applicant. More likely, it will result in higher discretion on part of the Patent Office, which could be unhealthy for the intellectual property rights ecosystem.

***


[i] http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf

[ii] Section 3: What are not inventions. -The following are not inventions within the meaning of this Act,-

            (k) a mathematical or business method or a computer programme per se or algorithms;

New Microsoft PowerPoint Presentation

JURISDICTIONS FOR FILING PATENT APPLICATIONS IN INDIA

 JURISDICTIONS FOR FILING PATENT APPLICATIONS IN INDIA

By Garima Rai, Senior Associate 

INTRODUCTIONNew Microsoft PowerPoint Presentation

India is a huge country with an area of 3.287 million km² and a large population of approximately 1300 million. That is why many governmental agencies in India work on policy of localization rather than centralization.   

Patent office in India is no exception. In India, there are FOUR Patent Offices in FOUR different cities namely, Delhi, Kolkata, Chennai and Mumbai. The Patent Office is headquartered in Kolkata but the Controller General of Patents, Designs and Trademark (CGPDTM) has his office at the Mumbai Location.

WHO CAN FILE IN WHICH JURISDICTION ?

According to Patent Rule 4(1)(i)(a), an Indian applicant can file application for patent at the appropriate Patent Office under whose jurisdiction he normally resides or has his domicile or has a place of business or the place from where the invention actually originated. In case of joint applicants, the jurisdiction will be decided depending on the first applicant among the joint applicants.

Further, according to Patent Rule 4(1)(i)(b), for an applicant, who is non-resident or has no domicile or has no place of business in India, the address for service in India or place of business of his patent agent determines the appropriate patent office where applications for patent can be filed.

For example, if a foreign applicant chooses an Attorney based in Delhi, then the Patent application will be filed at the Delhi Patent Office. Similarly, if the foreign applicant selects an Attorney who has place of business at Chennai, then the patent application will be filed at the Chennai Patent Office.

Although these days, with the introduction of electronic systems, attorneys and firms in one jurisdiction are able to file applications in patent offices located in other jurisdictions. This is very handy strategy for filing applications in certain fields in particular patent offices where there are more chances of favorable issuance by certain patent groups and examiners in those offices. However, many contend that though this strategy works presently, with centralization of examiners and their rotations, the relevance of this strategy will lose significance in coming future.

The functioning of all the four branches of the Patent Office is the same. The territorial jurisdiction for Indian applicants is provided below:

TERRITORIAL JURISDICTION[1] OF APPROPRIATE OFFICE FOR THE APPLICANTS

Office

Territorial Jurisdiction

Patent Office Branch, Mumbai

The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli

Patent Office Branch, Chennai

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep, Telangana

Patent Office Branch, New Delhi

The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, Delhi and the Union Territory of Chandigarh.

Patent Office, Kolkata

The rest of India.

For queries, please email atmail@gip-india.in 

***

Important points in patent rules, 2016
Possible options for foreign entities to use Expedited Examination in India

Expediting Patent Examination in India, Patent Procedure in India

EXPEDITING PATENT EXAMINATION IN INDIA

By Kshitij Malhotra, Partner and Garima Rai, Senior Associate

INTRODUCTION

Important points in patent rules, 2016Patent rights have always played a vital role in encouraging innovations across the globe. Patent Rights not only provide exclusive right to the patentee for manufacturing and selling the patented product or process, they also provide the said exclusive right for a substantial period of 20 years from the date of filing.

One of the problems in the patent ecosystem in India is the delay in grant of patents. Many patent applicants complain that patent grant process in India takes a long time. On the other hand, unlike US, there is no patent term extension system in India, where a patent applicant could be compensated for the procrastination of the patent office. Many believe, this considerably deprives the innovators from enjoying their patent rights to the fullest.

 

 

DELAYED EXAMINATION OF PATENT APPLICATIONS

Any inventor who files a patent application wishes an early examination and faster prosecution of the patent application. A quick grant of patent is encouraging; it is an imperative. This is especially true in today’s day and age when technology moves at a high pace. By the time a technology is developed and commercialized these days, the tech community most often embraces a newer and more efficient alternative.

Such faster prosecution of patents requires a profound working of the Patent Office and active compliance from the patent applicants. It is a team effort of the entire patenting ecosystem, and sadly, it is not the case in India.

Presently, there is a huge backlog of pending patent applications at the Indian Patent Offices. For example, according to some recent reports, there are about 200,000 patent applications which are lying pending with the IPOs[i].

Accordingly, many plans by the government of India to encourage innovation and increase manufacturing in India is being threatened due to such delayed examination of patent applications. Companies who invest a large amount of money in research and development are losing on their opportunities to capitalize, and are unable to enjoy the patent rights to the fullest because of the delay at the Patent Office.

The problem of delay of grant of patents is so grave that even patent applicants have started to take the patent offices to courts. In a recent case[ii] at the Delhi High Court, Japanese company, Nitto Denko Corporation, filed a suit against the patent office for delay in grant of their patent.

In this case, the court had set up a task committee to address the issue of pendency of patent applications at the IPO. The committee reported in their final report that the issue of pendency could be resolved by proactive efforts from the patent office not only limited to increasing manpower i.e. number of patent examiners.

As a consequence of this case, on 16 May 2016, the IPO published new patent amendment rules to address the issue of reducing the backlog of patent applications and expediting the examination process at IPO.

In order to address the backlog problem, the Indian Patent Office has launched many new initiatives directed at faster examination of patent applications. According to some reports, the plan of patent office is to work towards reducing the grant period to 18 months by the year 2018[iii].

This article focuses on explaining some of the ways in which patent grant could be expedited in India. At first, this article includes a discussion on practical ways using which the applicants can expedite the grant of their patent rights in India. Thereafter, the article looks into the newly introduced expedited examination system in India.

  1. PRACTICAL POINTERS TO EXPEDITING EXAMINATION OF PATENT APPLICATIONS:

Usually, patent applications are taken up for examination in the order of Request for Examination at the Indian Patent Office. In India, a Request for Examination or RFE has to be mandatorily filed within 48 months from the earliest priority date for the patent office to take it for examination.

It has been observed in many cases that clients wait until the due date for filing Request for Examination arrives. This could be understandable from client’s perspective, as they might want to take some more time to understand the patentability of their patent application by looking at the international search reports, international preliminary examination reports or examination in other patent offices. Delaying examination request in India could provide some extra time to the clients without incurring extra costs[iv]. However, one of the direct consequences of such a wait is that it delays the grant of a patent even further.

Nevertheless, once a patent application is taken for examination by an Indian examiner, it is inevitable that the patent application will be granted/ refused in another 6 months[v] discounting any voluntary extensions if filed by the patent applicant. Therefore, it becomes all the more important to focus on how the time period from the filing of the patent to the issuance of office action could be reduced.

Contemplating the above, if there isn’t any reason for the otherwise, it is always advisable for the applicant to file the Request for Examination simultaneously at the time of filing the patent application which will queue the patent application in the list of applications being examined. On similar lines it is also suggested to foreign applicants to choose Paris Convention route over PCT national phase route and file the request for examination simultaneously while strategizing their filings in India. The logic is simple, the earlier the RFE date, the earlier the office action issuance date.

Although the above strategy might lead to some extra costs for your patent portfolio initially, the recent amendments at the patent office might allow an applicant to recover major portion of this cost if they think that their patent is not worth pursuing.

According to recent amendments, a patent applicant is allowed to withdraw their request for examination at any time before office action issuance, and claim a refund of fees if the request for examination is withdrawal. According to Rule 7(4A) of Patent Rules 2016, upon withdrawal of an application for which a Request for Examination was filed and First Examination Report (Office action) has not been issued, the 90% of the fee paid for Request for Examination may be refunded to the applicant. This provision seems to be inserted in order to encourage applicants to withdraw their applications if they do not see a merit in pursuing patent rights in India.

Another important aspect in expediting patent grant is that once an office action is issued, the endeavor of the patent applicant should be to respond to the office actions at the earliest. The amended Indian patent procedures require the applicant to respond within 6 months from the issuance of the first office action. More specifically, Section 21 of the Indian Patents Act requires that on issuance of the office action, the applicant has to be comply with all regularities within 6 months of such issuance. Therefore, a late response, say in the sixth month, might leave very less amount of time for the applicant to meet any further objections issued by the patent examiner. 

Moreover, in light of the aforesaid, it also makes a lot of sense for the applicants to make sure that all the procedural formalities are duly complete and all the required documents are on record before the examination of the application. The logic is that the more the informalities there are in a submitted application, the more time it will take to traverse the objections/ rejections issued by the examiner.

For example, the applicant or their agents should be cautious of requirements under Section 8 of the Indian Patents Act also called as Form 3 requirements. It has been noted that many times timely submission of the foreign filing particulars lessens down the number of objections in the First Examination Report, or might prevent some trivial office action issuance.

Similarly, the applicants should also take note of submitting the Power of Attorney and the Proof of Right of the applicant within the prescribed deadline. This further smoothens the examination process and would reduce the chances of unnecessary objections which could delay the grant process.

  1. OFFICIAL EXPEDITED EXAMINATION IN INDIA

Recently, in the newly amended Patent Rules 2016[vi] introduced by the Indian Patent Office, considerable emphasis has been given to establishing an expedited examination regime. Among the several benefits, which include reduction in official fees, there are provisions regarding filing expedited examination in which the application is supposed to be taken out of the normal queue and examined.

Although these provisions have been directly proposed for start up companies, interestingly, non-start up companies also stand to gain from these provisions. Especially, companies and inventors, who have filed a corresponding PCT application with India as the ISA or IPEA, could also use this route to expedite the examination of their patent applications. Initial trends are showing that the patent office is issuing office action within 3-4 months of submitting the request for expedited examination. The procedures suggest a patent grant within a time frame of 12-15 months of submitting such expedited request.

According to the newly amended Patent Rules, 2016, the following category of applicants can use this expedited examination route –

  1. A start-up company[vii] as defined under norms laid by the government; or

  2. A patent applicant which has selected India as the International Searching Authority in the PCT application corresponding to the Indian applicant.

The newly amended patent rules also allow applicants who have already filed the Request for Examination (RFE), for converting the already filed RFE to an expedited one by paying the balance fee. The condition being is the applicant must satisfy the criteria mentioned above.

 

HOW CAN FOREIGN ENTITIES BENEFIT FROM EXPEDITED EXAMINATION ?

One of the questions that arises out of the newly introduced provisions is as to how can foreign entities benefit from the expedited examination measures taken by the Indian Patent Office.

Possible options for foreign entities to use Expedited Examination in IndiaIt is known to many that there are many foreign companies who own Indian subsidiaries established in India. Some of these companies are into Research and Development activities, especially localizing foreign products for the Indian markets. It is very straight forward that such companies have the option of filing patents for their locally developed inventions and using the expedited examination route for expediting their patent grants in India. What they will need to do is that they will have to submit a corresponding PCT application and designate IPO as ISA or IPEA in the said PCT application. The process though will be little costly but is practically possible.

Another strategy, although little complicated, that foreign companies could use is to either assign their inventions to their Indian subsidiaries authorizing them to file their Indian patent application or designate them as co-applicant in their Indian patent application. However, simultaneously in such cases, the foreign applicant has to ensure that a corresponding PCT application is also on record with India as designated ISA or IPEA.

It will be appreciated that although this strategy has limited application, it could be useful in certain cases where the Indian patent is so critical for a company that it could undertake the complex activities for such assignment or co-ownership, as the case may be.

Another question, which comes to the mind, is that can a foreign start-up company use the expedited examination route? In other words, can a foreign start-up company qualify the definition of start-up in Rule 2(fb) of the Patent Rules, 2016 as amended?

According to the said rule, a start-up Company is an entity which:-

  1. is not more than 5 years old, and
  2. does not have an annual turnover of twenty five crores of Indian rupees, and
  3. is involved in research and innovation.

According to explanation adduced to Rule 2(fb), an entity is defined as a private limited company as defined under the Indian Companies Act, or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.

An immediate question that comes to the mind is that whether a company registered outside India is excluded under the criteria? Although there is a lack of certainty in the enacted rules, the answer is most likely, not. There are multiple reasons for such an inference.   

Firstly, it should be noted that the enacted rule 2 (fb) only derives equivalence when it comes to defining companies, while it points out to absolute criteria for registration when it comes to Partnerships or LLPs. In other words, the term “entity” in the said rule is equated to a private company in case of companies, while for partnerships and LLPs the term “entity” means ones that are “registered” under the Indian Partnership and LLP Acts. If the rule makers wanted to clearly exclude private companies established outside India they would have clearly required registration in India, just like they have done in case of partnerships and LLPs.

If there is any doubt about to the aforesaid argument, then the attention is also drawn to prescribed Form 28[viii] under the Patent Rules, 2016. The Form 28 clearly requires foreign companies to provide relevant documents in column 2 (ii)(b).

Nevertheless, it has been observed that many applicants filed the Request for Expedited Examination last year 2016. It was noted that Examination Report was issued within 2.5 months[ix] from the date of filing of the Request for Examination in one of the cases. In another case, the Examination Report was issued in about one month[x] from the date of filing of the Request for Examination.

It is anticipated that in coming times the expedited request for examination could become a viable alternative for expediting the grant of patents in India.

 

***


[i]http://timesofindia.indiatimes.com/city/bengaluru/India-has-1-92-lakh-active-researchers-2-37-lakh-pending-patents/articleshow/52226942.cms  

[ii] http://delhihighcourt.nic.in/dhcqrydisp_O.asp?pn=202118&yr=2014  

[iii] http://www.thehindu.com/business/Industry/now-a-tatkal-system-to-expedite-patent-examination/article8612218.ece  

[iv] The average fees for completing request for examination formality would be around USD 500/-

[v]  The recent amendments have reduced the acceptance period under Section 21 of Indian Patents Act to 6 months from 12 months. This time period could be extended another 3 months.

[vi] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_42_1_Patent__Amendment_Rules_2016_16May2016.pdf   

[vii] See rule 2 (fb) of Patent Rules, 2016 as annexed

 

 

[viii] http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_40_1/form-28.pdf  

[ix] See prosecution history of Indian Patent Application No. – 201631028557

[x] See prosecution history of Indian Patent Application No. – 201611031492

 

 

 


Annexure 1

RULE 2 (fb) OF PATENT RULES, 2016

In these rules, unless the context otherwise requires,-

(fb) ―Startup means an entity, where-

(i) more than five years have not lapsed from the date of its incorporation or registration;

(ii) the turnover for any of the financial years, out of the aforementioned five years, did not exceed rupees twenty-five crores; and

(iii) it is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property:

Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a start-up. Provided further that the mere act of developing

a. products or services or processes which do not have potential for commercialization, or

b. undifferentiated products or services or processes, or

c. products or services or processes with no or limited incremental value for customers or workflow, would not be covered under this definition.

Explanation 1- An entity shall cease to be a start-up on completion of five years from the date of its incorporation/ or registration or if its turnover for any previous year exceeds rupees twenty-five crores.

Explanation 2- Entity means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.

Explanation 3- The term ―Turnover shall have the same meaning as defined in the Companies Act, 2013 (18 of 2013).

Explanation 4- An entity is considered to be working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property if it aims to develop and commercialize a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

Explanation 5- The reference rates of foreign currency of the Reserve Bank of India shall prevail.

 

 

 

 

 

req
form-3

REQUIREMENTS UNDER SECTION 8 OF THE INDIAN PATENTS ACT

REQUIREMENTS UNDER SECTION 8 OF THE INDIAN PATENTS ACT

By Garima Rai, Sr. Associate

Introduction to Section 8 of the Indian Patents Act:

Section 8 of the Indian Patents Act deals with the “Statement and Undertaking” regarding submission of details of foreign applications by an applicant at the Indian Patent Office.

Section 8 quoted below:

Information and undertaking regarding foreign applications:

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—

(a) a statement setting out detailed particulars of such application; and

(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

This is a peculiar requirement by the Indian Patent Office in connection to a patent application filed in India. Under Section 8(1) of the Indian Patents Act, an applicant has to provide a statement disclosing the detailed particulars of applications filed outside India corresponding to the Indian patent application[1]. According to Rule 12, the applicant is required to submit the information within 6 months from date of filing in India. It should be noted that the requirement is about submitting family member information and not any disclosure about prior art etc.

In compliance with clause (b) of Section 8(1), the applicant is required to submit an undertaking that he would keep the Controller updated from time to time about the detailed particulars of the corresponding foreign applications[2].

In addition to that, under Section 8(2), the applicant is required to submit such information when the Controller (Patent Office) requires or calls for such information from the applicant. According to Rule 12, such information is required to be submitted within 6 months of such a request.

Difference between Section 8 requirements and IDS requirements in US patent law:

It is worth noting and emphasizing that the IDS[3] requirements in the US patent law are different in comparison to the Section 8 requirements of the Indian Patents law.

According to the IDS requirements of the USPTO, an applicant is required to submit the background art, prior art documents, citations, and other such documents which are relevant to the patentability of a particular patent application. There is a specified Information Disclosure Statement[4] form available at the USPTO for such submissions.

Whereas according to Section 8 of the Indian Patents Act, the applicant is required to submit the details regarding corresponding foreign applications.

In simple words, one can say that the IDS requirements of the USPTO, requires the prior arts which the applicant might have found before filing his patent application. The applicant might have conducted a prior art search and hence concluded to file the patent application.

Section 8 – Some issues

There are some questions that frequently arise with respect to Section 8. One of the questions which arise is what actually is required to be submitted under Section 8(2)? Another question which arises is that what does the details relating to processing of foreign applications mean?

With respect to these questions, the applicant must furnish the details (name of the country, date of application, application number, status of the application, date of publication, patent no. and date of grant) of family members to the patent office in officially prescribed Form 3. As noted above, even if the invention is assigned to another entity in another country, still the applicant is required to keep the Patent Office informed of such an application.

Further, an applicant should submit the copies of all searches and examination reports including claims as allowed in respect of any family applications including CIPs, divisional, refiling etc. as the applicant is under a continued obligation to provide such details. The table below provides the details for suggestive practice for furnishing:

req


In view of developments and case laws with respect to Section 8, it is observed that failure to disclose such information may lead to opposition and may also be a ground for revocation of a granted patent. Under Section 25(1)(h)[5] of the Act, a person may file an opposition either to a pending published patent application or the person may file a post grant opposition under Section 25(2)(h)[6].  

Consequences of Non-compliance:

Further, failure of submission of such information may lead to revocation of a granted patent under Section 64(1)(m)[7] by the Intellectual Property Appellate Board.

Rationale behind Section 8 requirements

It is observed and understood that the objective of submitting documents under Section 8 is to assist the Examiner in examining the patent application. Few decades ago, the availability of internet to people was localized and limited. During those days, it was difficult for the Examiners to get the updates on the corresponding foreign filed patent applications. Hence, the burden of submitting the foreign filing details relied upon the applicant.

To the contrary, now-a-days, internet is widely available and at much higher speed in comparison to olden days. Moreover, it has become extremely simple to surf the internet and find out information about the foreign filed patent applications. But, there still lies a responsibility of the applicant to acquaint the Examiner with the developments of the corresponding foreign filed patent applications due to complexity of global patent regimes and language complications.

Some Case Laws

Below are few of the important judgements from the history of Indian Patent System in relation to the requirements under Section 8:

1. Richter Gedeon vs. Cipla[8]: In this case, at the Indian patent office, Indian company Cipla filed a post grant opposition to the Indian Patent No. 202297 of Richter Gedeon under Section 25(2) of the Patens Act alleging multiple grounds including non-compliance with Section 8. The patentee had filed a national phase application in India on December 9, 2003 with an undertaking under Form 3. The next updated Form 3 was filed on October 25, 2004 only mentioning the patent application’s entry into several countries.

The Controller in this case observed that:-

even though substantial updated information on the corresponding application filed in foreign countries were expected to be available like the information in JP and USA, the same was not informed to the Indian Patent Office. I view this irregularity by patentee as violation of provision as required under Section 8 of Patents Act. I conclude that such a ground of opposition is validly established by the opponent.

From the facts narrated in this instant order it appears that the applicant had voluntarily abandoned the JP and USA applications after the grant of the Indian patent. The obligation to provide updated information with the patent office, is applicable till the Indian patent is granted and not thereafter. However, from the order of the Controller it appears that the applicant may not have kept the Patent Office updated about the information in relation to the JP and USA prosecution before the grant of patent. The Patent was revoked on multiple grounds including Section 8 compliance.

2. Chemtura Corporation vs. Union of India[9]:  In this case, Chemtura Corporation was granted Indian Patent No. 213608 on January 9, 2008. In some infringement proceedings in High Court, Union of India alleged that Chemtura had failed to comply with the requirements under Section 8 and therefore their patent was invalid. In this case, it is mentioned that even though the Patent Office through its letter dated October 20, 2004 had called upon Chemtura to disclose “details regarding the search and/or examination report including claims of the application allowed…. in respect of same or substantially same invention filed in any one of the major patent office such as USPTO, EPO and JPO etc”, in its response, Chemtura did not submit any relevant information. In fact, Chemtura had replied by a letter dated October 17, 2005 that there had been no further development and thus no further information was required to be submitted.

The High Court observed that the patent applicant was required to furnish any and all foreign search reports in its possession at the time of its reply to the patent office i.e. as on October 17, 2005. The court referred to the corresponding US application and European application where the claims were narrowed to a greater extent and an acceptable limit.

The Delhi High Court then held that an applicant was required to periodically update the Controller on the current status of the corresponding foreign applications and that mere furnishing of information on the status of the application did not satisfy the requirements of Section 8(2) of the Act. Especially, the court in this case pointed out to the deliberate attempt of the applicant in concealing the status of family members, in light of unfavourable developments in other patent offices. 

3. Roche vs. Cipla[10]: It is interesting to note that in this particular case, the High Court did not revoke the patent even though it was concluded that Section 8 requirements had not been complied by Roche prima-facie. The Delhi High Court relied on the fact that Section 64 uses the word ‘may’ and this gives the Court discretion not to revoke the patent based on the facts of this case. 

It was a fact, that Roche was granted an Indian Patent No. 196774 on February 23, 2007 and application for the Indian Patent was filed on March 13, 1996.  Roche had filed an infringement action against Cipla for infringing on its patent 196774.

In its counter claim, Cipla alleged that Roche did not comply with the requirements under Section 8 of the Indian Patents Act. In this regard, Cipla mentioned that Roche did not disclose US Patent 6900221 which was filed subsequent to the filing of the Indian Patent application, in 2000. Cipla contented that this US patent consisted of a polymorph B version of the drug and thus relates to the same or substantially the same invention and should have been disclosed to the controller as required under Section 8.  

According to Roche, polymorphic version B of the said compound would not come within the meaning of same or substantially the same invention. Further, Roche also contended that Polymorphic version B compound is different from the Indian patent and therefore Roche was not required to disclose the US patent under Section 8.

Further, Roche in its infringement claim had contended that the drugs made available in the market by Cipla, was a polymorph version B of the drug and this drug fell within the scope of the Indian Patent 196774.

The court held that Roche had not complied with the requirements of section 8. However, the court did not revoke the patent. The court stated that the discretion to revoke or not to revoke a patent lies with the Court and this exists by use of the word “may” under Section 64 of the Patents Act.

4. KONINKLIJKE PHILIPS ELECTRONICS N.V. vs. Sukesh Bahl[11]: This is another interesting case, in which a patent was spared of revocation by the courts even though on the face of it, the patentee did not seem to comply with literal requirements of Section 8.

In this particular case, Philips owned an Indian Patent no. 218255 which was granted on 31st March 2008. They filed a suit for infringement against Maj. (Retd.) Sukesh Behl, proprietor M/s. Pearl Engineering Company (Defendant No.1) and M/s. Pearl Engineering Company (Defendant No.2) for permanent injunction to restrain the Defendants from infringing the Plaintiff's Essential DVD Video/DVD ROM Disc Patents, in particular Indian Patent registered under No. 218255 and for other incidental reliefs.

In their counter claim, the defendants prayed that the said patent should be revoked and be declared as invalid. The ground for seeking revocation was the failure of the Plaintiff to disclose the information to the Controller of Patents in relation to the requirement under Section 8. To this, the plaintiff filed a list of corresponding foreign applications before the Controller of Patents. The reason assigned for delay and inadvertence was that the details of the corresponding foreign applications which were printed on back side of the paper were inadvertently not filed and only some part could be filed.

The court was of the view that the any violation of the requirement under Section 8 may attract Section 64(1)(m) for revocation of the patent, such revocation is not automatic. Further, the court pointed out that in this particular case, the applicant was inadvertent and not deliberate in concealing information about foreign family members. Furthermore, the court also was non-conclusive in regard with the importance of information which was omitted from submission by the patentee.

Conclusion:

The Section 8 requirements in Indian patent law, requires an applicant to furnish the details (name of the country, date of application, application number, status of the application, date of publication and date of grant), within a stipulated filing in India. As noted above, even if the invention is assigned to another entity in another country, still the applicant is required to keep the Patent Office informed of such an application. Further, the applicant is required to submit the copies of all searches and examination reports including claims as allowed in respect of any family applications including CIPs, divisional, refiling etc. as the applicant is under a continued obligation to provide such details. Additionally, please note that in the Examination Report, the Examiners may require the applicant to submit English translation of any non-English document corresponding to the foreign filed patent applications.

Although the requirements of this provision may seem to be taxing for the applicants, according to recent case laws and developments, the level of compliance seems to have been diluted. Especially, in Roche case and Philips case, the courts seem to have brought the dimensions of materiality of information and intention of the applicant in following the provisions of Section 8. The courts have further emphasized on the discretionary power of the courts and factual context in determining whether Section 8 requirements have been met or not.

These new dimensions added in the law about Section 8 have come as a relief for applicants, who at one point have complained about the stringency of Section 8 requirements. Although, this should not make the applicants complacent while meeting Section 8 requirements. The Section 8 requirements still pose enough burdens on the applicants to be careful while meeting the requirements. Therefore, a careful consultation with your patent attorney about meeting Section 8 requirements is advisable.

In case, there are any queries, you may feel free to email us at mail@gip-india.in.

 

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ANNEXURE I

form-3 

Key Points

PATENT (AMENDMENT) RULES 2016

Patent (Amendment) Rules 2016 – Salient Features

By Ram Naresh Patyal, Sr. Associate & Kshitij Malhotra, Partner

 

The Indian patent office has published Patent (Amendment) rules on 16th May, 2016 and made these rules effective thereto. Further, a clarification notice has also been published on 18th May, 2016. We are providing hereinbelow some of the key provisions in the amendment for your easy reference.

1.    Expediting patent prosecution process and reduction in acceptance periodKey Points

1.1. Introducing expedited examination system: The Patent office has introduced a new expedited examination system for fast track examination of patent applications. According to the new system, an applicant may file a request for expedited examination for his/her patent application.

Main grounds for filing a request for expedited examination are as follows:

A). that the applicant in the corresponding international application has selected India as the competent International Searching Authority (ISA) or elected India as an International Preliminary Examining Authority (IPEA); or

B). that the applicant is a startup company as defined by the instant rules.

The request for expedited examination can now be filed by paying the relevant fees i.e. INR 8,000 for a natural person/startup company; INR 25,000 for a small entity and INR 60,000 for others.

Provisions are also given in the new rules to convert pending request for examinations into expedited examination requests. Specifically, a request for examination may be converted into a request for expedited examination by paying the relevant deficit fees [i.e. INR 4,000 for a natural person/startup company; INR 15,000 for a small entity and INR 40,000 for others] & submitting the requisite documents.

Under the new system, the time for preparing the examination report by the patent examiner shall ordinarily be 1 month but not exceeding 2 months from the date of reference of the application to him by the Controller.

Further, the period within which the Controller shall dispose of the report of the examiner shall be 1 month from the date of receipt of such report by the Controller. The first statement of objection shall be issued in 15 days from the date of disposal of the report of the examiner by the controller.

Right now the choice of selecting Indian patent office as an ISA or IPEA is limitedly available mainly to PCT applicants from India. This means that the access to expedited system is available to either domestic Indian applicants or first filers in India. It will be interesting to see if the patent office extends the expedited examination system to foreign applicants?

1.2. Time reduction for replying to office action issued on or after 16th May, 2016: One of the most important developments in the new rules is the reduction in time period to respond to office actions. Many users of the patent system in the past have complained about the dilatory and discreet nature of 12 months acceptance period in the Indian patent system.

Taking note of the concerns, the patent office has reduced the time for putting an application in order for grant to 6 months from earlier 12 month limit from the issuance of the first examination report. The timeline can be extended by another 3 months upon request along with paying the prescribed fee.

It is also cleared in the notice dated 18th May, 2016 that the time period for putting an application in order for grant for the office action issued before 16th May, 2016 shall remain to be 12 months from issuance of the first examination report. This means that the reduction in acceptance period for office action issued before 16th May, 2016 will remain unchanged.

1.3. Expediting disposal of the application: In order to encourage patent examiners to proactively conclude the patent prosecution proceedings, the patent office has also set a deadline to wrap up proceedings in front of the distinguished office.  

In order to encourage the patent applicants to conclude the proceedings proactively on their side, the patent office has limited the number of adjournments in the hearing process to not more than 2 adjournments, with each adjournment shall not be for more than 30 days. Further, the patent office has now set up 15 day deadline for any documentary submissions post any hearings.

Overall, the above measures seem to be steps in the right direction to expedite the examination. It will allow the patent office to shrug it’s distinction of being a slow processing offices.

The measure to introduce time limits for the patent examiners and applicants alike gives the correct signals to all stake-holders that the Indian patent office means business.

2.    New rules regarding standardization of complete specification

The Indian patent office has issued new rules in order to streamline the examination process. The patent office has issued new rules to standardize the practice for submission of Abstract and Drawings.

2.1. Drawings: The patent office will now require a specific reference of the drawings in the complete specification. Further, the features illustrated in the drawings shall be followed by their respective reference signs in parentheses in the claims.

2.2. Abstract: The patent office now requires the abstract to contain a concise summary of the matter contained in the specification and the summary  to indicate clearly the technical field to which the invention belongs, technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding any speculative use and where necessary. Further, the abstract shall contain the chemical formula, which characterizes the invention.

3.    Adopting Reforms to Eliminate Procedural Inefficiencies

The patent office has issued new set of rules to eliminate various procedural difficulties that existed previously. Below are list of few of the notable changes aimed at improving the efficiency of the patent office:

3.1. Power of attorney: The new rules mandate submission of a power of attorney within a period of 3 months (previously there was no such official prescribed time period) from the date of filing of application in India.

3.2. Application withdrawal system: The new rules will now allow an applicant to withdraw his/ her patent application any time before the examination of the said application.

3.3. Introduction of New Forms & Changes in Format: Please note that the format of Form 1, Form 3, Form 4, Form 13, and Form 28 has been changed. New forms: Form-18A [REQUEST FOR EXPEDITED EXAMINATION OF APPLICATION FOR PATENT], Form-29 [REQUEST FOR WITHDRAWAL OF THE APPLICATION FOR PATENT] and Form-30 [WHEN NO OTHER FORM IS PRESCRIBED], have been introduced. 

3.4. Refundable fee: The new rules have provided for provisions for refund of fees in case it has been paid twice while filing of forms in the online filing system. The new rules have also provisioned for refund of examination fees in case the application is withdrawn before examination.

3.5. Request for examination (RFE) deadline for divisional applications: The patent office now mandates that RFE should be filed at the time of filing the divisional application. Earlier deadline for filing RFE was 6 months from the date of filing divisional application.

3.6. Amendments to international applications: In the new rules, the patent office has clarified that any application corresponding to an international application under PCT can include amendments under Art. 19 & 34 of PCT. If the applicant wishes to delete any claims, then the new rules allow the applicant to do so in accordance with procedures of amendments set in rule 14 of the consolidated rules.

4.    Adopting electronic interface till hearing:

Over the past few years the patent office has endeavored to digitalize the patent prosecution process. The present rules have introduced some welcome changes to continue this effort.

4.1. Electronic submission of documents: The new rules mandate a patent agent representing a client to submit all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original. It is also cleared in the notice dated 18th May, 2016 that the document which should be submitted in original are a) Power of Attorney, b) proof of the right to make an application, c) deed of assignment, certificate regarding change in name of the applicant, license agreement, etc., d) declaration regarding inventorship, and e) priority documents.

 4.2. Hearings through video conference: The patent office has introduced a new mechanism by which hearings in relation to a patent application may be held through video conferencing or other communication devices, thereby making the procedure more practical and cost effective.

4.3. Deadline for Submissions: The new rules mandated that in all cases of hearing, written submissions and the relevant documents shall be filed within fifteen days from the date of hearing. Further, an applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee at least three days before the date of hearing.

It is expected that these rules would reduce delays in disposing patent applications. For example, delays caused by adjournments where the applicant/agent is not physically available to attend the hearing could now be avoided.

5.    Defining the meaning of a “startup” entity

In furtherance to global efforts of incentivizing startup companies, the patent office has incorporated new rules with respect of recognizing startup companies filing patents in India.

The government has now inserted another entity category, referred to as “startup” entity in the Amendment rules, 2016. The startup entity could enjoy benefits of expedited examination and reduction in fees (at par with natural persons).

The definition of startup entity is as follows:-

5.1. A startup entity has been defined as a company:

5.1.1.   Where more than 5 years have not lapsed from the date of its incorporation/registration;

5.1.2.   The turnover for any of the financial years, out of the above mentioned 5 years, did not exceed INR 25 crores (USD 3,732,600 approximately); and

5.1.3.   Where it is working towards innovation, development, deployment or commercialization of new products, processes, services driven by technology or IP.

 Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a startup.
Provided further that the mere act of developing-

a. products or services or processes which do not have potential for commercialization, or


b. undifferentiated products or services or processes, or


c. products or services or processes with no or limited incremental value for customers or workflow, would not be covered under this definition.

It is yet to be clarified whether foreign companies (incorporated outside India) could qualify as a startup entity in India and the procedure using which they claim the startup benefits. Although, recent government suggestions indicate that they do.

If you have any questions, please feel free to contact us at mail@gip-india.in.

Authors:

Ram Naresh Patyal is a Senior Associate at GIP India and a Registered Patent Agent. He is also a qualified lawyer from University of Delhi.

Kshitij Malhotra is representative partner of GIP India. He is a chemical engineer and a registered patent agent. He is also a qualified lawyer from University of Delhi.”  

 

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 1. Public Notice

2. Patents (Amendment) Rules 2016, have come into force w.e.f. 16 May 2016

3. Clarification regarding the Patent (Amendment) Rules 2016