DPS Parmar and Aniruddh Singh of LexOrbis discuss the pros and cons of ongoing sectoral reform.
With the introduction of a comprehensive National Intellectual Property Rights (IPR) policy in May 2016, the government clearly laid down a roadmap for future development in the IP administration in India. The policy, with the motto of “Creative India; Innovative India”, will contribute to the advancement of India’s IP ecosystem. There were many modifications that took place, from technological advancement to development in infrastructural facilities, and from policy reforms to human capital development. If 2016 was dedicated to certain IP reforms, we may see many policy deliverables in 2017.
The government introduced the Patents (Amendment) Rules 2016, in May last year. The provisions of the rules that found favour with applicants included concessions in the fees for startups and the possibility of a 90% refund in case of withdrawals before a first action report. However, certain provisions, like curtailment of turnaround time from 12 months to six months, received mixed reviews from stakeholders. The purpose behind this move is to accelerate the examination process, but it will be challenging for the applicant to revert back in a shorter time-span.
Similarly, restricting an accelerated examination to only the start-ups and India International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) applicants, along with a restriction of 1,000 applications per year, gives an impression of a cautious approach from the government to avoid a mad rush, which reflects on the inability of the Indian Patent Office (IPO) to take more work. With the induction of more examiners one can expect this restriction to be lifted soon, paving the way for the establishment of an efficient tool to meet the demands of patent applicants.
The pendency of the over 250,000 IP applications remains a major challenge for the government. Although some positive initiatives were taken by recruiting 458 patent examiners and 100 trademark examiners, the particular step of contractual basis appointments cannot be considered a permanent solution. It is expected that IP offices should hire permanent technical manpower as much as possible so that in future pendency does not haunt prospective applicants.
Caught in the whirlpool of litigation triggered by public interest litigations (PILs) serving the social interest, High Court decisions serving the judicial interest, and executive dilemmas in implement court orders, the Intellectual Property Appellate Board (IPAB) was non-functional for a year following the departure of its chairman and a technical member last May. This was a setback to the appellate process as well as the revocation and rectification interests of IP stakeholders. The ministry has provided assurances in parliament that the necessary steps are being taken to fill existing vacancies in the IPAB and modernize and strengthen its infrastructure. The challenge for 2017 will be to make the IPAB fully functional.
In a welcome move, the government has formed a committee to look into anomalies in the computer related inventions (CRI) guidelines issued last year. The committee’s report is with government now and revised guidelines are expected to be published soon. There were certain inconsistencies in the implementation of these guidelines within IP offices and it will be a challenge for the different IPO jurisdictions to complement each other and issue decisions that are consistent with provisions of the Patents Act.
Although government initiatives last year tried to address most of the shortcomings of IP registration and protection in India, certain obstacles prevail in the system, and some of the modifications which were bought with the motive of streamlining the process of IP registration have created confusion among stakeholders.
The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) has tried to resolve these ambiguities by way of clarifications and assuring the timely resolution of problems faced by stakeholders in the normal course of practice, but it will be very challenging, even for the government, to act efficiently in such a diverse IP ecosystem. The initiatives of the government will continue to be on the radar of stakeholders for critical review.
The possibility of new opportunities and challenges are likely to arise in 2017, as modifications bought by the government in the name of IP reforms struggle for permanent status. So it is highly recommended that IP owners and stakeholders be sufficiently vigilant while opting for an IP strategy or initiating safety measures for an adequate IP protection.