IP protection in India for Japanese businesses

By Joginder Singh and Rajeev Kumar, LexOrbis in New Delhi

India-Japan relations have traditionally been extraordinarily strong, and the people of both countries have engaged in cultural and business exchanges for centuries. As the influence of a robust IP regime on the propensity towards business investment is widely acknowledged, the co-operation in IP protection between the two countries has been very impressive to date.

There is no doubt about the importance of obtaining IP rights and enforcing them to safeguard business interests, especially after making huge financial investments. On that note, obtaining IP protection in India is easy through the office of the Controller General of Patents, Designs and Trademarks (CGPDTM), which comes with multiple benefits.

Joginder Singh
Joginder Singh
LexOrbis in New Delhi
Tel: + 91 97 1126 2818
Email: joginder@lexorbis.com

Considering a huge market with a massive consumer base and continual improvement in manufacturing capacity and infrastructure in India, registering IP rights should not be ignored. Besides, the overall cost of obtaining IP protection in India is far lower than in advanced jurisdictions like the US and EU, while the manufacturing cost was ranked cheaper than China and Vietnam in a recent study. These are the result of government initiatives to make the country a global manufacturing hub.

The professional fee for IP services in India is also reasonable for an incredibly competitive market. The CGPDTM office accepts English, which means no translation into native languages is needed for filing and prosecuting IP applications, leading to a significant reduction in the overall cost of IP protection compared to other jurisdictions like China, Brazil and South Korea, which all require native-language translations.

The annual report issued by the CGPDTM office for the 2021-2022 fiscal year illustrates its continued efforts in strengthening the IP rights framework and aligning it with global standards. Simplification and IT-enabled functioning of procedures, as well as growth in the technical workforce, have considerably improved the timeliness of processing applications and reducing existing backlogs. The office successfully handled the pandemic by taking measures and speedily transforming to a virtual mode to minimise the adverse effect on the examination of IP applications.

The CGPDTM office also took steps to revive its functions for efficient online activities, and implemented work from home through a virtual private network that ensured secured access for officers and staff. This enabled the office to continue with online examinations, hearings, grants and registrations of IP applications without disruption. An e-sign facility was also introduced to further simplify and streamline the patent filing process, in addition to the existing digital signature facility.

Rajeev Kumar
Rajeev Kumar
New Delhi
Tel: + 91 99 1175 8776
Email: rajeev@lexorbis.com

The CGPDTM office also understood the importance and necessity to propel the filing of design applications and accordingly notified the amendment in the Design Rules on 25 January 2021, which aimed to enable speedy processing favoured by startups and small businesses. Also, as per the amendment, designs would be classified according to the latest edition of the Locarno Classification, rule 10(1), to bring the design registrations in India on par with international standards.

In one of its new initiatives, the office implemented a new procedure for the prompt redressal of stakeholders’ grievances or complaints. Stakeholders have already been using the facility of the online feedback mechanism for providing suggestions to the office, and seeking relief in case of any difficulties. The office also conducts open house redressal of grievances or complaints, which is appreciated by the stakeholders.

During the 2021-2022 fiscal year, the filing of patent applications increased by 13.5%. Domestic filings and grants increased by 2.8% and 5.9% from the previous year, respectively, but the disposal of patents decreased by 31.8%, primarily due to the extension of the period of limitation, as per the directions of the Supreme Court.

In trademarks, the pendency in the examination of applications continued to be less than a month, despite an increase in filing. The increase in trademark applications’ acceptance has been due to the procedural reforms brought in by amendments in rules and process reengineering.

In designs as well, the examination timeline for new applications continued to be less than a month. A remarkable improvement was seen in the filing of design applications, examination, registration, and disposal of design applications, of 59.4%, 59.7%, 66.8% and 68.7%, respectively, during the same period compared to the previous year.

The remarkable improvement was also seen in the Copyright Office, due to computerisation and reengineering of processes. The examination of new applications continued immediately after one month, which is the mandatory period for receiving any objections regarding new applications. Filing of copyright applications increased by 26.7%, and the registration of copyright increased by 26%, compared to 2020-2021.

As an international body, the performance of the Indian Patent Office has substantially improved, both as the International Searching Authority and Trademarks Registry under the Madrid Protocol system, while adhering to the Patent Co-operation Treaty (PCT) timelines in almost all applications referred for international search reports and international preliminary examination reports. The inclusion of the traditional knowledge digital library in the PCT minimum documentation has also been proposed.

To further the objective of increased awareness about IP, the office took efforts to bring awareness to students, who would be the future task force. The National Intellectual Property Awareness Mission was inaugurated on 8 December 2021 and conducted various programmes to impart IP awareness to at least a million students until 15 August 2022. As of 31 March 2022, more than 600,000 of students and faculty members had been sensitised about IP via more than 2,300 educational institutes across the country.

Various initiatives have been taken in the past few years to improve the overall Indian IP ecosystem. One of the most important improvements is the significant reduction of time taken by the Indian Patent Office for examining a patent application under the normal route.

As of now, the average time to begin an examination is less than a year from the date of filing a request for examination and, in many applications, it is less than six months. The patents are generally granted within two to three years from the date of filing, as against the seven to eight years in the recent past.

Likewise, the backlog has been cleared for other forms of IP with continual recruitment, process improvements and systematic technology adoption. The CGPDTM office is again considering an increase in the strength of examiners and further improvement in prosecution timelines is soon to be expected.

In the case of applicants availing of an expedited examination procedure, subject to eligibility criteria, the grant time can be further reduced to about a year from the date of filing. With the issuance of examination guidelines specific to the field of inventions, the patent office is also trying to improve the quality of patent examinations, particularly in computer-implemented inventions, pharmaceuticals and biotechnology.

India and Japan also have a patent prosecution highway (PPH) agreement in place, on a trial basis, for three years. Japanese applicants can seek an expedited patent examination in India based on a corresponding patent allowed by the Japanese Patent Office. The trial has been successful so far, and it would be reasonable to expect that the PPH with other major patent offices, such as the US Patent and Trademark Office or the European Patent Office, will be considered in the near future.

The Indian Patent Office has also revised its manual to streamline various practices and procedures concerning the patents act and rules to supply a better experience for applicants. The patent office continues to conduct discussions with stakeholders to find and resolve various issues and streamline divergent practices. Similar processes and improvements have been made for other forms of IP including trademarks, designs, copyrights, etc.

The Supreme Court of India, in January 2022, held that from 15 March 2020 to 28 February 2022 will not be counted towards timelines prescribed under all general and special laws. This direction continues to provide a remedy to many applicants who missed due dates due to the pandemic, and wherein the extended timeline is still applicable.

India also saw a significant change in the IP dispute resolution system. The Intellectual Property Appellate Board, which has the authority to hear appeals arising from the decisions of the controllers and registrars, was abolished on 4 April 2021 and its powers have now been vested in the high courts.

For further streamlining the redressal of IP cases, an IP Division in the Delhi High Court was created as a first in the entire country, which deals with all matters relating to IP rights including fresh and pending IP infringement suits, and matters pending before the erstwhile appellate board. Recently, the High Court of Judicature at Madras has also created an IP Division.

The reduced waiting time for examinations, the faster disposal of IP applications, a steady increase in the number of IP applications filed, continual and progressive legislative reforms, and the creation of specialised divisions in high courts leading to landmark judgments, are the noticeable trends in recent years. All these signify the development of a conducive IP system in India to incentivise technology transfer and boost foreign direct investment at a rapid rate.

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