28 April, 2017
India Patent Examination works on the concept of the deferred examination system. In deferred Examination system, it is mandatory for an applicant to file a request for Examination or that application will not be examined. An applicant needs to file a Request for Examination within 48 months from the date of the first filing of the patent Application. In case, the Applicant does not file a Request for Examination, the application will be treated as withdrawn under Section 11(B) of the Indian Patent Act, 1970. It is well known that the Application whose examination request filed earlier will be examined earlier by the Indian Patent office. As per Section 12 of the Indian Patent Act, the controller refers the application to the Examiner at the earliest as soon as a request for Examination is filed by an Applicant. Ideally, if the Patent act and the procedure are followed, an applicant should receive a first examination report within 12 months of the filing of a request for Examination in case patent office has already published an application within 18 months under Section 11(A) of the Indian Patent Act. However, it has been realized that Indian Patent office take longer period around 3-4 years to examine the Patent Application from the date of filing of the request for Examination.
Majority of patent applications in India are filed by foreign applicants through Patent Co-operation treaty (PCT) route. PCT applications are required to be examined by an International Search Authorities on the basis of novelty and inventive step. International Search Authority is considered to provide most relevant results to the Applicant as it is a very decisive for an Applicant to move further with the application in the elected or designated states which result in a huge capital investment. Many of the applicants and the countries rely on the report made by International Search Authority to accelerate the examination procedure.
In a recent case, R. Muralidharan (Petitioner), who is an is an advocate, law teacher, mediator and registered patent agent has filed writ petition against Controller General Of Patents in Delhi High Court to direct the Controller to use PCT search Reports as essential input in the examination of pending National Phase Applications of both Indian as well as foreign application pending before Patent office, the petitioner claims that the timelines for Examination of patent under the Patents Act, 1970 read with the Rules there under are not followed resulting in years of delay. According to the petitioner, the timeline for the patent registration in India can be reduced if the PCT Search Reports already obtained by the applicants are treated as an essential input in the Examination of the pending National Phase Application for patent of both Indian and foreign applicants.
The Assistant Solicitor General appearing on behalf of Controller General of Patents, concedes that if a PCT search report is already available, certainly that will be taken into account, though it may not be binding. He relied on the observation of the Delhi High Court in Ten Xc Wireless Inc and Another v. Mobi Antenna Technologies, [2012] 187 DLT 632: 2011 (48) PTC 426 (Del) in which the Court observed that the International Search Reports issued by the World Intellectual Property Organization (WIPO) in respect of PCT application is not binding in view of Article 33(1) of the Patent Cooperation Treaty, which provides that the object of the International Preliminary Examination is to formulate a preliminary and non-binding opinion. Thus, the statutory duties of the Examiner concerned to conduct prior art search cannot be set aside or circumvented by relying on the findings of the International Search Report (ISR) or International Preliminary Report on Patentability (IPRP).
After hearing the contentions of the parties Delhi High Court held that “there is no lis inter se the parties on the issue rose in the petition. It is not the plea of the petitioner that the ISR and IPRP are to be treated as final and binding, but only that they should be treated as an essential input, as it would facilitate an early scrutiny by the Examiners, something not disputed even by the Assistant Solicitor General appearing on behalf of Controller General of Patents. Thus, all that has to be recorded is that such PCT Search Report is being and shall be treated as an essential input in the examination by the Examiner, in pursuance of the mandate of Section 12 of the Patents Act, 1970 with the question of examination of the application.”
The main intent of the petitioner behind filing a writ petition before the Delhi High Court in this matter is to accelerate the examination procedure of the patent application by the examination authorities and clear the pendency at Patent offices in India. However the Indian patent office and DIPP is already working to improve and accelerate the Indian patent examination system. The Patents (Amendment) Rules, 2016 which came into force last year are equipped with adequate procedural features of expedited examination of patent applications for startups and as well as for the applicants who choose India as International Search Authority during PCT phase, reduction of time for responding to the examination report for the Applicant are few procedural development came for the soul purpose of streamlining the disposal rate of Patent applications.
Several administrative measures has also been taken in recent time by DIPP which includes the recruitment of more than 350 Examiners for reducing the average time taken for the examination of patents applications in India. The Government authorities have also assured that the timeline for Indian patent applications will reduce from 5-7 years to 18 months by March, 2018.
In addition to these IP reforms, the updated website of Controller General of Patents, Designs and Trade Marks (CGPDTM), facility of e-filing, dispatching of examination reports via email, allowing hearing through video-conferencing etc. are phenomenal developments which will surely accelerate the examination procedure of the Indian patent applications. These steps towards the digitalization and technological development are expected to bring more transparency and promptness in the working as well as services of the IP offices in India.
For further information, please contact:
Ravi Aggarwal, LexOrbis
mail@lexorbis.com
