Indian Patent Office

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Office of the Controller General of Patents, Designs and Trademarks
Office of the Controller General of Patents, Designs and Trademarks, Govt of India.png
Agency overview
Jurisdiction Government of India
Headquarters Mumbai, India
Agency executives
  • Shri. Unnat P. Pandit, Controller General of Patents, Designs & Trade Marks
  • Shri. Hardev Karar, Senior Joint Controller of Patents & Designs & Head of Office
  • Shri. N R Meena, Senior Joint Controller of Patents & Designs & Head of Office, New Delhi
  • Shri. N K Mohanty, Senior Joint Controller of Patents & Designs
Parent department Department for Promotion of Industry and Internal Trade
Website https://ipindia.gov.in

The Office of the Controller General of Patents, Designs and Trade Marks(CGPDTM) generally known as the Indian Patent Office, is an agency under the Department for Promotion of Industry and Internal Trade which administers the Indian law of Patents, Designs and Trade Marks. [1] [2]

Contents

History

Foundation

On 28 February 1856, the Government of India promulgated legislation to grant what was then termed as "exclusive privileges for the encouragement of inventions of new manufactures". On 3 March 1856, a civil engineer, George Alfred DePenning of 7, Grant's Lane, Calcutta petitioned the Government of India for grant of exclusive privileges for his invention — "An Efficient Punkah Pulling Machine". On 2 September, DePenning, submitted the Specifications for his invention along with drawings to illustrate its working. These were accepted and the invention was granted the first ever Intellectual Property protection in India. [3]

Amendments to the Patents Act & Rules

Amendments (in 1999, 2002, 2005) were necessitated by India's obligations under TRIPS, allowing product patents in drugs and chemicals. A pre-grant representation in addition to the existing post-grant opposition has been re-introduced. [4] A provision of later amendments was on software patent-ability, which was later withdrawn in another amendment in 2005. The amendment in 2012 [5] focused on change in marks of Patent Agent Examination. [6]

Indian Patent Rules were amended in 2003, 2005, 2006, 2012, 2013, 2014, 2016, 2018, 2019 and 2020. The 2006 amendment of rules introduced reduced time lines and a fee structure based on specification size and number of claims, in addition to a basic fee. Indian Patent amendment rules 2012 was for amendments in criteria for patent agent exam qualification. Gazette Notification of Patent (Amendments) Rules 2013 has made necessary provisions for recognising Patent office as Examining authority and Searching authority [7] on international level for filing, searching and examination of patent along with necessary fees. Patent amendment rules 2014 introduced a third category of applicant for small entities and revised the basic fee for filing a patent application. [8] Patent amendment rule 2016 implemented on 16 May 2016, and introduced such as electronic communication to applicant/agent, and applicant can withdrawn their application using Form-29, and majorly introduced for the expedited examination for startup companies, and the timeline to put the grant of applicant has been reduced from 12 months to 6 months. In addition, video conference has been introduced for hearing the patent matters. [9] Patent amendment rules 2019 introduced a patent agent shall submit all documents only by electronic transmission duly authenticated. Further, fee reductions for small entity, and fast track examination for specific applicants including female were introduced in 2019. [10]

Activities

Patent administration

Trends in Indian patents, 1997-2013, The number of biotech patents has doubled in a decade. Trends in Indian patents, 1997-2013, The number of biotech patents has doubled in a decade.svg
Trends in Indian patents, 1997–2013, The number of biotech patents has doubled in a decade.

The CGPDTM reports to the Department for Promotion of Industry and Internal Trade (DPIIT) under the Ministry of Commerce and Industry and has five main administrative sections: [11]

The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai, but the office of the CGPDTM is in Mumbai. The office of the Patent Information System and National Institute for Intellectual Property Management is at Nagpur. [12] The Controller General (CG), who supervises the administration of the Patents Act, the Designs Act, and the Trade Marks Act, also advises the Government on matters relating to these subjects. Shri. Unnat P. Pandit is the current CG and took charge in April 2022. Under the office of CGPDTM, a Geographical Indications Registry has been established in Chennai to administer the Geographical Indications of Goods (Registration and Protection) Act, 1999.

The Indian Patent Office has 667 Group A Gazetted officers, out of which 526 Patent Examiners, 97 Assistant Controllers, 42 Deputy Controllers, 1 Joint Controller, and 1 Senior Joint Controller, all of whom operate from four branches. Officer' Cadre of Indian Patent Office :

1. Controller General Of Patents & Design ( equivalent to Secretary to Government Of India/ Payband Level 15)

2. Senior Joint Controller Of Patents & Design ( equivalent to Additional Secretary to Government of India/ Payband Level 14)

3. Joint Controller Of Patents & Design ( equivalent to Senior Joint Secretary to Government of India/ Payband Level 13)

4. Deputy Controller of Patents & Design ( equivalent to Joint Secretary to Government Of India/ Payband Level 12)

5. Assistant Controller of Patents & Design (equivalent to Deputy Secretary to Government of India/ Payband Level 11)

6. Examiner Of Patents & Design ( equivalent to Under Secretary to Government of India/ Payband Level 10)

Although the designations of the Controllers differ, all of them (with the exception of the Controller General) have equal authority in administering the Patents Act. There are numerous other employees comes under Group B,C,D, works and operate from the four branches.  An Indian Patent Examiner is mandated to search for prior art and for objections under any other ground as provided in the Patent's Act, then to report to the Controller, who has the power to either accept or reject Examiners' reports. Unlike the system at the USPTO /EPO/JPO, Examiners at IPO have only recommending power and the controllers are empowered by statute either to accept or refuse their recommendations. Examiners' reports to the Controller are not open to the public unless courts allow it (section 144 of the Patents Act). A Parliamentary committee has recommended repealing S144. [13]  [14]  [15]

Patent duration

Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from the International filing date accorded under PCT. [16]

Since the rights granted by an Indian Patent Office extends only throughout the territory of the India and ceases to have effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent in a specific country (according to its law) either through :PCT route or through conventional filing of application.

Patent Renewal and Restoration of Lapsed Patent

In order to keep the patent rights for the entire period, India's Patent Act has made it mandatory for the patent holders to pay a renewal fee. [17] Once the patent is granted the patentee does not need to pay a renewal or maintenance fee for the first two years. The first renewal fee will be payable from the third year onwards. [18] The patentee is also given a choice to pay the whole fees at a time or they can pay it every year. [19] If in case the patent is not renewed by the company or individual, the patent ceases to exist and will be moved to the public domain. [17] Once the subject matter that has been patented enters the public domain it is no longer protected and can be used by anyone without facing any suit or consequences of patent infringement. [20]

Restoration of a lapsed patent is relatively time taking and a complex procedure. [17] According to Section 60 of The Patents Act, 1970,  an application for the restoration of the patent can be made by the patentee or their legal representative and the petition should be applied to the controller at the Indian Patent Office (IPO) within eighteen months from the date at which the patent ceases to have an effect. [20] However, the application should contain a statement which states the reason behind the failure in paying the renewal fees and evidence which can be in the form of a letter, copy of documents or a deed. [17] The applicant should also be ready to submit additional evidence regarding the same if asked by the controller. After examining all the information provided by the applicant, if the controller feels that the reason and the evidence provided by the applicant imply towards unintentional failure to pay the renewal fees then he/ she would publish the application and any person can oppose the restoration application within the prescribed period by filling form 14 and paying a fee. [17] If in case the opposition gives a notice during the prescribed period then the controller would notify the applicant about the same and would give an opportunity to both the applicant and the controller to present their respective arguments before deciding the case. If no notice is given by the opposition or if the decision of the controller is in favor of the applicant if in case of the opposition, then upon payment of any unpaid additional and renewal fee the patent is restored.

Geographical Indications

India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of Goods (Registration & Protection) Act, 1999 has come into force with effect from 15 September 2003. GIs have been defined under Article 22(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement as: "Indications which identify a good as originating in the territory of a member, or a region or a locality in that territory, where a given quality, reputation or characteristic of the good is essentially attributable to its geographic origin." [21]

The GI tag ensures that none other than those registered as authorised users (or at least those residing inside the geographic territory) are allowed to use the popular product name. In 2004–05, Darjeeling tea became the first GI tagged product in India and since then by July 2012, 178 had been added to the list. [21] [22] [23] [24] [25]

Modernisation

The Indian Patent Office has implemented a modernisation program according to an Indian govt website. And according to this website "Efforts have been made to improve the working of the Patent Offices within the resources available and that the problem of backlog is also being attacked through 50% higher monthly target for disposal of patent applications per Examiner". [26] [27] E- Filing of Patents & Trademarks is made possible and according to an Indian Minister the first phase of the modernisation comes to an end and the Indian Patent office wishes to be an International search Authority. [28] The second phase of modernisation has been proposed with the aim of achieving US patent examination efficiency among others. [29] Patent filings during the year 2007–08 were 35218. [30]

Criticism

As per an Indian patent attorney, patents which were beyond the Act were granted by the office. [31] The Indian Patent office had an unusually high grant rate for the year 2005–06 in respect of numbers of refused patent applications compared to other major patent offices. [32] [33] The monthly target for Indian examiners is 30 new and amended applications per month and the Indian Patent Office strictly has only 12 months to grant/refuse the application as compared to foreign patent offices where applicants can extend the final date indefinitely. Knowledge commission, an Indian Government appointed body has recommended measures regarding the functioning of the office. [34] [35] [36] [37]

The controversial promotion of examiners as assistant controllers has led to an imbalance in the set-up with more controllers than examiners. [38] [39] [40] Controller General had promised time-bound promotions to officers and recruitment of new examiners to mitigate the crisis of lack of officers and the problem of attrition due to low pay and lack of promotion. [41] Cases of corruption have been reported. [42] In 2012, only 137 out of the announced 257 candidates expressed interest to join. [43] [44] The monthly target for examiners are 15 new cases(FERs) and 25 disposals which has led to officers working under tremendous pressure to show output thereby affecting the quality of grant of patents. [45] [46] Indian patent examiners have the higher workload and the pay is amongst the lowest. [47] While a patent examiner in the European Patent Office would handle less than seven patent applications per month and a USPTO examiner would handle eight applications per month, an Indian examiner reportedly handles at least 40 applications a month. However an Indian examiner's monthly salary is less than a third of his/her counterparts in other foreign patent offices. [48] The issue of attrition due to lack of promotion to examiners was acknowledged by the Minister of Commerce and Industry Nirmala Sitharaman during IP day celebrations. [49] A concerned government official recommended outsourcing of search in view of increased work load and the IPO has started to outsource prior-art searches violating the stipulations of the prevailing Patents Act. [50] However, because of quality and legal issues with outsourcing, the outsourcing contracts were cancelled. The Department of Industrial Policy & Promotion under the Ministry of commerce, Government of India has come out with a discussion paper in order to address the issues plaguing the Indian Patent Office such as granting financial and administrative autonomy, separation of Patent and Trademark offices, setting up of additional offices are some of the issues put forth for input from stakeholders.

Accessibility

The IP Office's systems and processes in India have been under scrutiny for their lack of accessibility. They currently do not fully comply with the GIGW 3.0 guidelines [51] and the BIS Standard (IS 17802). [52] Persons with disabilities using screen readers encounter challenges when attempting to access the IP office online systems.

On 29 November 2021, Dr. Kalyan C. Kankanala, a Patent & Trademark Attorney with Blindness, initiated legal action against this issue by filing a Writ petition in the Karnataka High Court. His petition emphasized the need for the IP office's systems to be made accessible to persons with disabilities, ensuring that documents and emails are available in formats compatible with screen readers. The case has been registered as W.P. No. 21978/2021. [53]

In response to the concerns raised by Dr. Kalyan and the legal proceedings, the Office of Controller General of Patents, Designs & Trademarks (O/o CGPDTM) issued the Guidelines for Accessibility and Reasonable Accommodations for Persons with Disabilities on 4 March 2022. [54] These guidelines underscore their dedication to enhancing accessibility and providing reasonable accommodations for Persons with Disabilities practicing and interacting with IP Offices under O/o CGPDTM.

Related Research Articles

<span class="mw-page-title-main">Patent</span> Type of legal protection for an invention

A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention. In most countries, patent rights fall under private law and the patent holder must sue someone infringing the patent in order to enforce their rights.

<span class="mw-page-title-main">Industrial design right</span> Intellectual property rights

An industrial design right is an intellectual property right that protects the visual design of objects that are purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and oppositions to granted patents.

<span class="mw-page-title-main">Intellectual Property Office (United Kingdom)</span> Patent Office of the United Kingdom

The Intellectual Property Office of the United Kingdom is, since 2 April 2007, the operating name of The Patent Office. It is the official government body responsible for intellectual property rights in the UK and is an executive agency of the Department for Science, Innovation and Technology (DSIT).

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act of Japan. Article 2 defines an invention as "the highly advanced creation of technical ideas utilizing the law of nature".

Maintenance fees or renewal fees are fees paid to maintain a granted patent in force. Some patent laws require the payment of maintenance fees for pending patent applications. Not all patent laws require the payment of maintenance fees and different laws provide different regulations concerning not only the amount payable but also the regularity of the payments. In countries where maintenance fees are to be paid annually, they are sometimes called patent annuities.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

In the United States, an Office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark. The expression is used in many jurisdictions.

Scams in intellectual property include scams in which inventors and other rights holders are lured to pay money for an apparently official registration of their intellectual property, or for professional development and promotion of their ideas, but do not receive the expected services.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

World Intellectual Property Indicators (WIPI) is an annual statistical report published by the World Intellectual Property Organization (WIPO). The publication provides an overview of the activity in the areas of patents, utility models, trademarks, industrial designs, microorganisms, plant variety protection, geographical indications and the creative economy.

<span class="mw-page-title-main">Backlog of unexamined patent applications</span>

Although not clearly defined, the backlog of unexamined patent applications consists, at one point in time, of all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and in 2009 it reportedly continued to grow. Alone, the United States Patent and Trademark Office (USPTO) was reported to have, in 2009, a backlog of more than 700,000 patent applications.

Republic Act No. 8293, otherwise known as The Intellectual Property Code of the Philippines lays down the rules and regulations that grant, and enforce patents in the Philippines. Patents may be granted to technical solutions such as an inventions, machines, devices, processes, or an improvement of any of the foregoing. The technical solution must be novel, innovative, and industrially useful. In order for a technical solution to be granted a patent, the inventor must file an application to the Bureau of Patents, which will examine, and in some cases, grant its approval. The law is designed as to foster domestic creativity, to attract foreign investors, and to motivate inventors to release their products for public access.

Intellectual property in India refers to the patents, copyrights and other intangible assets in India.

Registration of intellectual property in Ghana is key to safeguarding one's intellectual efforts from infringement. Intellectual property law of Ghana encompasses intellectual property (IP) laws in Ghana, such as laws governing copyright, patent, trademark, industrial design rights, and unfair competition. The main intellectual property laws in Ghana include the Copyright Act, 2005, the Patents Act, 2003, the Trademarks Act, 2004, the Industrial Designs Act, 2003 and the Protection Against Unfair Competition Act, 2000. These are supplemented by regulations passed by the Legislature to augment the rate of development under IP laws.

Peter v. NantKwest Inc., 589 U.S. ___ (2019), was a United States Supreme Court case from the October 2019 term.

References

  1. ↑ "Official website of Intellectual Property India". ipindia.nic.in. Retrieved 27 February 2020.
  2. ↑ "Department for Promotion of Industry and Internal Trade | MoCI | GoI | Ministry of Commerce and Industry | GOI". dipp.gov.in. Retrieved 27 February 2020.
  3. ↑ "First patent". 5 July 2009.
  4. ↑ "Intellectual Property Rights and Access to ARV Medicines:Civil Society Resistance in the Global South, See Page 49" (PDF).
  5. ↑ "Patent rules amendment 2012" (PDF).
  6. ↑ "DIPP notifies changes in the patent agent exam rules". 7 November 2012.
  7. ↑ "Intellectual Property of India- ISA, IPEA". ipindiaservices.gov.in. Retrieved 2 March 2019.
  8. ↑ "Patent Amendment Rule 2014" (PDF).
  9. ↑ "Patent Amendment Rule 2016" (PDF).
  10. ↑ "Trademark Amendment Rules 2019" (PDF). ipindia.gov.in.
  11. ↑ "Organisation structure". Controller General of Patents, Designs, and Trade Marks.
  12. ↑ "RGNIIPM website".
  13. ↑ "Repealing S144".
  14. ↑ "Attrition-hit offices get impatient- Jobs-News By Industry-News-The Economic Times".
  15. ↑ "Patent offices suffer as private companies lure experienced staff".
  16. ↑ "Frequently Asked Questions" (PDF).
  17. 1 2 3 4 5 "Patent Renewal in India - Fee and Procedure". India Briefing News. 27 September 2018. Retrieved 12 April 2020.
  18. ↑ "FAQ Details". www.ipindia.nic.in. Retrieved 12 April 2020.
  19. ↑ "FAQ Details". www.ipindia.nic.in. Retrieved 12 April 2020.
  20. 1 2 "Restoration of Lapsed Patents in India - Intellectual Property - India". www.mondaq.com. Retrieved 12 April 2020.
  21. 1 2 "Karnataka gets highest number of GI tags". Business Standard . 11 April 2008.
  22. ↑ "Tirupati laddu gets global patent". The Times of India . 16 September 2009. Archived from the original on 8 April 2011.
  23. ↑ Govind D. Belgaumkar and Anil Kumar Sastry (27 October 2006). "Unique symbols of Karnataka". The Hindu . Archived from the original on 10 February 2007.
  24. ↑ "GI tag: TN trails Karnataka with 18 products". The Times of India . 29 August 2010. Archived from the original on 3 November 2012.
  25. ↑ "A copyright for Bikaneri bhujia, Hyderbadi haleem". The Indian Express. 14 September 2010.
  26. ↑ "Indian Patent Advanced Search System".
  27. ↑ "Modernization of IP Offices in India" (PDF).
  28. ↑ "Agreement between the Indian Patent Office and WIPO" (PDF).
  29. ↑ "Outcome Budget 2007–2008" (PDF). Ministry of Commerce & Industry, Department of Industrial Policy & Promotion, Government of India. Archived from the original (PDF) on 19 February 2009. Retrieved 22 January 2008.
  30. ↑ "Annual Report 2007-2008" (PDF). IPIndia.
  31. ↑ "Managing Intellectual Property".
  32. ↑ "Patent Office Annual Reports".
  33. ↑ "Appointment of the Indian patent office as an international searching and preliminary examining authority" (PDF).
  34. ↑ "Knowledge Commission recommendations- IPR.doc" (PDF). Archived from the original (PDF) on 31 October 2007. Retrieved 8 January 2008.
  35. ↑ "Lawyer group to challenge patent for Roche?s anti-HIV drug – livemint".
  36. ↑ "Controller orders inquiry into Chennai office patent for Roche – livemint".
  37. ↑ "Restructuring CGPDTM" (PDF).
  38. ↑ "Indian Patent Office Breaks with Tradition and Gets a New Chief". 12 June 2023.
  39. ↑ "Indians patents hit due to legal battle".
  40. ↑ "The Advantages and Harmonization of Patent System, See page 52" (PDF). Archived from the original (PDF) on 22 July 2011. Retrieved 2 May 2008.
  41. ↑ "Meeting India IP challenges-Source-Managing Intellectual Property".
  42. ↑ "DIPP" (PDF). Archived from the original (PDF) on 15 October 2015. Retrieved 15 July 2012.
  43. ↑ "Demand for flexible compensation". 12 June 2023.
  44. ↑ "Parliament discussion on Patent Office". Archived from the original on 7 March 2016. Retrieved 14 June 2012.
  45. ↑ "Livemint-To clear backlog, Indian patent office to hire 500 over five years". 26 July 2013.
  46. ↑ "Staff shortage dogs patent office as govt sits on compensation plan-livemint". 24 October 2012.
  47. ↑ Unnikrishnan, C.H.; Narayan, Khushboo (10 July 2008). "Patent offices suffer as private companies lure experienced staff". livemint.com. Livemint & The Wall Street Journal. Retrieved 1 March 2014.
  48. ↑ "Lowest pay for IP officers".
  49. ↑ "Intellectual Property should go for Commercialisation: Nirmala Sitharaman".
  50. ↑ "Patent office outsources".
  51. ↑ "GIGW 3.0 guidelines" . Retrieved 21 September 2023.
  52. ↑ "BIS Standard (IS 17802)" . Retrieved 21 September 2023.
  53. ↑ "W.P. No. 21978/2021 Case Status" . Retrieved 21 September 2023.
  54. ↑ "Guidelines for Accessibility and Reasonable Accommodations for Persons with Disabilities" (PDF). 4 March 2022. Retrieved 21 September 2023.

See also

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