Emerging trends in patent legislation

As was expected, riding on the developments of preceding years, the last year has proven to be quite exciting from the perspective of intellectual property protection and enforcement in India. Significant developments have been witnessed from all quarters, further streamlining the nation’s overall IP ecosystem. In the past few months, the effects of the covid-19 pandemic have started showing up in the field of IP, yet there have still been so many noteworthy IP-related developments.

One of the foremost developments of the year was the landmark judgment in Bayer Corporation v Union of India, where the division bench of Delhi High Court held that the export of a patented invention for experimental purposes was also covered under section 107A of the Patents Act (India’s Bolar exception) and, therefore, did not amount to patent infringement. The division bench held that the sale, use and construction of patented products in terms of section 107A of the act, for purposes both within the country and abroad, was authorized and legal. The decision affirmed that the end use and the purpose of the export form the basis of determining whether it falls within the purview of section 107A.

Further, the non-functioning of the Intellectual Property Appellate Board (IPAB) has been a major concern in the past few years, mainly due to the vacant positions of technical members, the presence of whom is mandatory for the adjudication of IP cases. In July 2019, in response to a writ petition filed in Mylan Laboratories v Union of India & Ors before Delhi High Court, the court opined that the “doctrine of necessity” had to be invoked in the case.

If the post of a technical member is lying vacant, the IPAB can proceed to hear urgent matters and the orders passed will not suffer invalidity on the ground of lack of a quorum. Further, the court directed the IPAB chairman, who was likely to resign from office in September 2019, to continue to hold office until the appointment of a new chairman.

Later, through an order dated 21 July 2020, the government announced the appointment of technical members for patents, trademarks and copyrights. While the IPAB had already started clearing the backlog of cases, considering that the IPAB is now fully functional, we can expect the disposals to be even quicker, providing requisite relief to the stakeholders.

In August 2019, Delhi High Court passed another landmark judgment in Shogun Organics Ltd v Gaur Hari Guchhait, where it was held that prior disclosure of the invention during preparatory steps taken for launching a product, such as disclosure to the government, cannot be held to constitute disclosure for the purpose of anticipation unless and until there is clear public disclosure of the same.

The high court also held that the disclosure to a government department or any other authority, not just of the patentee, but by any other person, would not constitute prior publication. This judgment encouraged the applicants, for example, in the field of pharmaceuticals, to follow the due government regulations, without the fear of undue disclosure of their inventions.

In September 2019, the Cell for IPR Promotion and Management (CIPAM) released model guidelines on the implementation of IPR policy for academic institutions. These guidelines apply to all IP created at the academic institution from the date of implementation of these guidelines. The guidelines throw light on the ownership of IP, and the commercialization and benefit sharing of IP generated.

The guidelines have also proposed a utilization model for the IP-generated revenues of an academic institution. The guidelines have proposed a fast-tracked solution in case of any dispute arising between two parties, by proposing the appointment of a committee of experts to address the concerns of the aggrieved person(s). These guidelines have been drafted to empower all the stakeholders of the researcher/academic institution/external partner ecosystem, while ensuring the promotion of innovation and smooth operations.

Another significant development was the amendments made to the Patent Rules. To start with, the requirement of submission of original documents after the submission of electronic copies was eliminated. Now, the original document is required to be submitted only when requested by the Indian Patent Office (IPO), failing which such documents shall be deemed not to have been filed.

New categories of applicants were also introduced for availing the benefits of expedited examination. The updated list of categories includes: (1) applications where India is selected as the ISA (international searching authority) or IPEA (international preliminary examining authority) in the corresponding PCT (patent co-operation treaty) application; (2) a government-recognized start-up; (3) a small entity; (4) a woman applicant; (5) a government department; (6) an institution established by a central, provincial or state act, which is owned or controlled by the government; (7) a government company; (8) an institution wholly or substantially financed by the government; (9) for an application pertaining to a sector that has been notified by the central government on the basis of a request from the head of a department of the central government; and (10) a patent prosecution highway (PPH). Further, under the new rules, a PCT applicant will no longer have to pay a transmittal fee to the IPO when filing PCT applications through the e-PCT filing module.

In November 2019, the IPO commenced a bilateral PPH programme between India and Japan. This was the first PPH programme adapted by the IPO, and that, too, on a trial basis. On 29 November 2019, the IPO and the Japan Patent Office (JPO) released the procedure guidelines for the PPH, which clearly outlined the details for implementing the PPH programme.

The details included conditions of implementation, criteria for eligibility of applications to avail the facility, supporting documents to be submitted along with the request of expedited examination through the PPH, and procedures for handling of such requests by both offices. Considering the success of the pilot PPH programme, it would not be unreasonable to expect that the IPO may consider establishing a PPH programme with other jurisdictions as well in times to come.

Another development in November 2019 was the release of a new Manual of Patent Office Practice and Procedure (MPPP), which replaced the earlier manual of 2011. The manual accommodated multiple amendments that have been made to the Patents Rules 2003 over the years, and the substantial digitization of the processes at the IPO.

For example, the manual provides insight into electronic and physical submission of the documents, and certain procedures relating to the IPO’s adoption of the World Intellectual Property Organization’s Digital Access Service (WIPO-DAS). While the MPPP does not have any binding force as such, it still acts as a guideline for the Controllers at the IPO, as well as patent agents.

In December 2019, Delhi High Court passed another landmark judgment, in Ferid Allani v Union of India & Ors, referring the patent application back to the IPO with guiding directions that computer-related inventions demonstrating “technical effect” or “technical contribution” are patentable, even though it may be based on a computer program.

Interestingly, the IPO again refused the application on the grounds that the invention lacked novelty, after which the aggrieved applicant filed an appeal before the IPAB. The IPAB finally granted the patent and held that only relevant prior art can be cited for objecting novelty and the inventive step of an alleged invention.

The IPAB also held that it is must appreciate the technical effect produced by the present invention while examining the patentability of subject matter. The mere fact that a computer program is used for effectuating a part of the present invention does not provide a bar to patentability.

Considering the covid-19 pandemic across the globe, and the situation in India, in March 2020 the Supreme Court of India issued an order providing for the extension of timelines falling after 15 March 2020, and until the subsequent date is announced by the Supreme Court. As the covid-19 pandemic has not yet subsided in India, and no last date for availing the relief of extension of timelines has yet been announced by the Supreme Court, all the deadlines at the IPO remain suspended for now. An applicant can therefore file a request to postpone the deadline without incurring any official fee.

While the impact caused by covid-19 is still around, things are slowly getting back to normal, for example, the IPO, IPAB, and courts in India are remotely working. The biggest challenge for the IP ecosystem in India will be to overcome the damage caused by the pandemic and continue with steady growth and improvement.

Article by Joginder Singh and Piyush Sharma

1st published on Asia Business Law Journal