Patent legislation across Asian jurisdictions is constantly catching up with the pandemic’s demands, with stronger protection, foreign filing and higher compensation being common themes. However, the gaps persist, and businesses need to fathom the domestic barriers to stay ahead.
India has been attracting global attention with its evolving IP ecosystem. Like any other jurisdiction, certain provisions in India’s patent law are unique, and this article aims to briefly explain these while providing some patent-related updates from India.
The foreign filing licence
One such unique provision relates to the requirement of the foreign filing licence (FFL). There are two options for complying with this requirement. The first is that before filing the first application outside India, the Indian resident inventor applies to the Indian Patent Office (IPO) for issuance of an
FFL by submitting a brief disclosure of the invention. Within three weeks of such a request, the IPO issues the FFL to the Indian resident inventor provided the disclosure does not pertain to defence technology or atomic energy. After obtaining the FFL, the first patent application for the same invention can be filed outside India with the name of the Indian resident inventor.
The second option is that, instead of obtaining the FFL from the IPO, the applicant files the first application in India, naming the resident inventor. If there is no objection from the IPO within six weeks, the applicant can file subsequent applications outside India. If the IPO has any objection to the filing of subsequent applications outside India, it may issue secrecy directions to that effect to the applicant. This power has rarely been exercised by the IPO. If no objection is received, the applicant is free to file a subsequent application after six weeks.
Phase filing and amendments
The IPO accepts the English language, which means no translation in native languages is required for filing and prosecuting patent applications in India. This leads to a significant reduction in the overall cost of patenting compared to jurisdictions like Japan, China, Brazil and South Korea, which all require native-language translations.
According to one estimate, translation into the native language generally costs about 35% of the total cost of patent protection. Indian patent law also allows a 31-month period to file a national phase application, based on the international patent co-operation treaty (PCT) against the 30 months provided by most jurisdictions.
The prosecution process
The patent prosecution process in India begins with the request for examination, which brings the application in the queue. Most of the backlog has been cleared, and now applications are getting examined within a year from the date of request. The applicant gets six months to respond to the first examination report. If all objections are successfully overcome, a patent is directly granted. Otherwise, an oral hearing takes place after some time to allow the applicant to address outstanding objections and, thereafter, a decision is issued. In case of an unfavourable decision, the applicant has two remedies – the first is to file a review petition before the patent office and the second is to file an appeal before an appropriate high court.
A divisional application can be filed any time before the grant or refusal of its parent application. Since there is no advance notice of decision on a patent application, the divisional application should be filed at the earliest opportunity. The divisional application is considered valid only when there are multiple inventions disclosed in the parent application, and the claims of the divisional application are distinct from the claims of the parent application.
Specifically, the independent claims of divisional applications should have at least one inventive feature that was not claimed in the parent application. The claims should also be supported in the description of the parent application. The divisional application can be filed either voluntarily, or in
response to a lack of unity objection from the IPO. The current position on the maintainability of voluntary divisional applications in India is a bit complex. The same has emerged from recent case laws, such as: Procter & Gamble Company v the Controller of Patents & Designs; Esco Corporation v the Controller of Patents & Designs; and UCB Pharma v the Controller of Patents.
In the above-mentioned cases, the Intellectual Property Appellate Board (IPAB) has held, among other things, that the claims of the divisional application are required to be derived from the claims of the parent application only. This is a very restrictive interpretation of laws relating to a divisional application. However, since this position is coming from the multiple decisions of the board, and has not been stayed or challenged, the IPO is likely to object to a divisional application that includes claims absent in the parent application. This can be circumvented by introducing the claims meant for divisional in the parent application itself.
If those claims get accepted in the parent application, that should be good enough for the applicant. Otherwise, the parent application will receive an objection for lack of unity, or newly added subject matter and, as in Milliken & Company v Union of India, such an objection provides a legitimate ground for the applicant to pursue the objected claims through a divisional application.
Disclosure of foreign applications
This legal requirement under the Indian Patent law continues to be a pain point for many applicants, particularly for big filers in various countries. The requirement is divided into two parts. The first part is known as the section 8(1) requirement, under which the IPO is required to be informed about the details of all related or corresponding applications filed anywhere outside India. The related or corresponding application includes any application originating from a common priority or PCT application, the national phase, continuation, continuation in part, and/or divisional application.
All necessary information about the corresponding applications is required to be filed on form 3 at the time of, or within six months from, the date of filing of the Indian patent application. After that, if any new corresponding application is filed anywhere outside India, the details of that application are required to be provided to the IPO on form 3 within six months from the filing.
The second part of the section 8 requirement, under section 8(2), relates to providing copies of the search or examination reports and granted claims in corresponding applications to the IPO, as and when it demands. Such demands are usually made by the controllers in the first examination report. However, since the IPO has now joined as a provider and accessing office to the World Intellectual Property Organisation Centralised Access to Search and Examination (WIPO CASE) system, the controllers now have the facility to access the search and examination reports of the corresponding application through the WIPO CASE system and, therefore, the demand made for such documents by the controller is continually decreasing.
Another unique provision in the Indian Patent Law is the requirement of a working statement. Recently, the government introduced a few changes in the format and procedures involved in filing working statements for patents. The changes became effective from 19 October 2020, and the new format and procedure would apply to the working statement to be filed in 2021 onwards. The filing date for the annual working statement has been changed from 31 March to 31 September each year. The period of working to be covered under the new working statement has been replaced from calendar year January to December, to financial year April to March. No working statement is required to be filed in the financial year in which the patent is granted.
A single working statement in form 27 can be filed in respect of multiple related patents, where the approximate revenue or value accrued from a particular patented invention cannot be derived separately from the approximate revenue or value accrued from related patents, and all such patents are granted to the same patentee.
Co-owners of a patent can jointly file one working statement for one or related patents, however, each licensee would be required to file the statements separately. The requirement for providing the quantum of patented products manufactured and/or imported into India has been done away with. There is no requirement for providing the details of licences issued in any given financial year in the working statement.
Abolishment of IPAB
The government has recently abolished the IPAB, the appellate authority for appeals related to IP rights matters. New appeals related to the Patents Act, Trademarks Act and Geographical Indications Act are now to be filed before the relevant high court. The recent parliamentary standing committee report on a review of IP rights regime in India suggests re-institution of the IPAB.
Delhi High Court has, on 7 July, announced the creation of an IP division within the high court for handling all IP rights matters, including those to be transferred from the IPAB. Delhi High Court, however, is yet to notify the rules of the IP division. Other high courts may also follow the initiative of Delhi High Court and start IP divisions soon.
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