Legislative Changes required in Indian Patents Act

The Patent law in India is governed by the provisions specified in the Patents Act, 1970, hereinafter “The Patents Act”. The aforementioned provisions are further supplemented by the Patent Rules, 2003, hereinafter “The Patent Rules”, and various guiding publications, such as the Manual of Patent Office Practice and Procedures, patent examination guidelines, and other relevant publications. For reasons such as compliance to international agreements and treaties, the omission of outdated laws,
changes in internal regulations, uniformity to global practices and requirements, and
the emergence of new technologies and their impact in our everyday lives, the
aforementioned guiding publications relating to the Patent law are updated from time
to time. Reflecting on the legislative reforms and amendments in the Indian Patent law,
The Patents Act was last amended in 2005. Since then, The Patent Rules have been
amended multiple times, the manual has been periodically updated, and the patent
examination guidelines for various technical areas have also been issued and revised
from time to time. All such efforts to streamline the overall patent ecosystem within the
purview of the existing Patents Act have been largely appreciated by most of the
stakeholders. However, there exists a long-felt need to make changes in certain
provisions of The Patents Act itself. Some prevalent issues with The Patents Act are
discussed in this article.

Article 27 of the TRIPS Agreement, to which India is one of the signatories, states that
patents shall be available for any inventions, whether products or processes, in all fields
of technology, provided that they are new, involve an inventive step and are capable of
industrial application. Further, patents shall be available and patent rights enjoyable
without discrimination as to the place of invention, the field of technology and whether
products are imported or locally produced. The article also states that members may
exclude from patentability inventions, the prevention within their territory of the
commercial exploitation of which is necessary to protect order public or morality,
including to protect human, animal or plant life or health or to avoid serious prejudice
to the environment, provided that such exclusion is not made merely because the
exploitation is prohibited by their law. The article also states that members may also
exclude from patentability: (a) Diagnostic, therapeutic and surgical methods for the
treatment of humans or animals; (b) Plants and animals other than micro-organisms,
and essentially biological processes for the production of plants or animals other than
non-biological and microbiological processes. However, members shall provide for the
protection of plant varieties either by patents or by an effective sui generis system or by
any combination thereof. On the other hand, Section 3 of The Patents Act provides a
wide-ranging list of subject matters which are proscribed from patenting in India. In
today’s time, Section 3 of The Patents Act needs a major, if not complete, revamp due to
global technological development and economic realities. Sections 3(d) and 3(k) are the
most commonly cited sections during the patent examination in India. Section 3(d) is
particularly relevant for patent applications for pharmaceuticals. It states, amongst
other things, that the mere discovery of a new form of a known substance, which does
not result in the enhancement of the known efficacy of that substance, is not patentable.
Likewise, Section 3(k) is particularly relevant for computer-related inventions and
states that mathematical and business methods, computer programs per se, and
algorithms are non-patentable. The provisions of Section 3 need to be reviewed to
encourage emerging innovations in the areas of pharmaceuticals, software, artificial
intelligence, IoT, technologies related to financial services, blockchain, etc. These
provisions not only affect multi-national companies; the innovations by Indian
companies and start-ups are also getting equally affected by said provisions.
Another issue with The Patents Act is the requirements under Section 8. In particular,
Section 8(1) requires applicants to voluntarily submit an updated list of the
corresponding foreign applications via Form 3 until the grant of Indian patent. Likewise,
Section 8(2) requires applicants to submit upon request: search & examination reports
issued by other Patent Offices and granted claims with English translations (if
applicable), for the corresponding foreign applications. These two provisions of The
Patents Act are reflective of the pre-Internet era and cast legal duties on the applicants
to periodically submit publically available information to the Indian Patent Office (IPO),
which in any case are accessible to IPO through several state of art patent databases,
such as WIPO CASE, ESPACENET, etc. On top of that, even a small discrepancy or delay in filing of Form 3 details is considered as an irregularity that needs to be obviated by filing a petition under rule 137 along with the prescribed fee. Applicants end up filing
multiple such petitions by the time patent is granted. These provisions, therefore, put an
unnecessary burden and huge cost implications onto applicants. In fact, these
provisions have been actually disincentivizing the filing of patent applications in India
by global companies. In view of the easy accessibility of required information over the
Internet, the provisions of Section 8 have lost relevance in today’s time. Patent laws in
most of the advance jurisdictions do not have identical provisions, let alone the
consequences associated therewith, such as revocation of a granted patent for noncompliance with Section 8.

Another burdensome issue is the working statement, i.e., Form 27, which is a unique
provision of the Indian Patents Act. Particularly, Section 146(2) requires every patentee
and licensee of a granted patent to voluntarily file a working statement every year. This
requirement puts additional burden and costs onto patentees/licensees. In fact, the
present format of Form 27 requires detailed information that is nearly impossible to
procure for most technology areas because it is based on a wrong presumption that one
product is covered by one patent. A revised format was circulated which is not yet
finalized. Despite the welcome changes, such as consideration of patent pools, the
revised format still does not solve most problems associated with the working
statement requirement. Comparing the working statement requirement to the practices
in counterpart jurisdictions, most of the advance jurisdictions do not have working
statement requirements and associated penalties on non-compliance. As a constructive
amendment in regard to this requirement, it would be desirable if at least the
requirement of voluntary submission of the working statement every year can be
repealed so that patentee/licensees are required to submit working statement
information only when asked under Section 146(1). Having said that, it needs to be
specified in what situations the Controller can demand a working statement. Otherwise,
it may lead to abrupt demands for working statements and overall non-predictability.
The applicant should also be provided with an option to submit the working statement
information in a sealed cover when it includes confidential or business-sensitive
information. Lastly, if no changes can be made in the provisions of Section 146, at least
the format of Form 27 needs to be drastically simplified to make it feasible to
meaningfully fill it up for all technologies. For example, simplified Form 27 can seek a
statement only to the extent of working or non-working of patented technology without
the quantum and value details. Simplified Form 27 may also include a declaration
signed by the patentee/licensee indicating their willingness to submit requested details
whenever specifically asked by the patent office, e.g., to decide on a request for a
compulsory license.

Another undesirably restrictive provision that needs to be looked into is Section 59(1).
This Section basically describes what kind of amendments can be done in
claims/specification. Section 59(1) requires amendments to be: (i) by way of
explanation, correction, and disclaimer only, (ii) for the incorporation of actual facts
only, (iii) supported by the original specification, and (iv) wholly within the scope of
original claims. It is submitted that particularly the first and fourth requirements of
Section 59(1) are very rigidly interpreted by most, leading to a very limited type of
amendments that can be done in claims/specification even before the grant of a patent.
Newly added claims are generally objected because of this provision. And the practices
with respect to this particular Section are largely divergent amongst different officers.
The situation becomes very problematic in case of poorly drafted claims/specification
and eventually, innocent applicants get penalized for that. Most of the advance
jurisdictions do allow the broadening of claim scope and addition of new independent/
dependent claims if supported by the specification. The first and fourth requirements of
Section 59(1) therefore need to be done away with. Alternatively, clarity can be
provided by adding corresponding rules in Patent Rules to have a broadest possible and
uniform interpretation of Section 59(1) to put an end to divergent practices prevalent
amongst different officers and to provide a rightful opportunity of amendments to the
applicants, e.g., in sync with the major foreign jurisdictions.

While the problem of delay in patent prosecution due to the backlog of applications
pending for examination is being very much dealt with in the appropriate manner, yet
there are many old applications that are awaiting a decision from the patent office.
There have been instances where a patent has been granted near to the end of its term.
Sometimes, patent applications are not processed due to indecisiveness by other
agencies, such as the Ministry of Defence (MoD) in case of foreign filing permission to an application allegedly relating to sensitive technology or by National Biodiversity
Authority (NBA) for the use of biological resources, etc. To solve such problems, some
new provisions in line with international best practices can be included in The Patents
Act. For example, the provision of Patent Term Adjustment (PTA) can be included to
account for the substantial delay in the prosecution process by the Indian Patent Office
by giving day-for-day credits to the normal patent term. Likewise, the provision of
Patent Term Extension (PTE) can be included to account for the delay caused due to
approvals by other agencies, such as MoD in case of defense or atomic energy-related
inventions, NBA for the use of biological resources, regulatory bodies for the safety and
efficacy of the product.

Apart from the delay caused by the patent office, many competitors or infringers misuse
the provisions of pre-grant opposition provided under Section 25(1) to delay the grant
of a competitor’s patent and /or increase patent prosecution cost so high that applicant
starts considering abandoning the patent application. It is to be noted that there is no
fixed timeline to dispose the pre-grant opposition which can be filed by any person any
time before the grant of patent. Unlike a post-grant opposition where only a person
interested can oppose, it is a prevalent practice amongst opponents to use a straw man
for filing a pre-grant opposition. It has been generally observed that patent applications
against which a pre-grant opposition is filed generally take a couple of additional years
to be disposed. In fact, it is quite possible for the opponents to indefinitely delay the
grant of a deserving patent just by filing a series of pre-grant oppositions one after
another considering that there is no official fee for filing a pre-grant opposition and that
there is no fixed timeline for the disposal of the pre-grant opposition. To stop such
malpractices, it is important to scrap the provision of pre-grant opposition under
Section 25(1) when the options of filing a post-grant opposition, a revocation petition
before the appellate board, or a counter-claim in respect of infringement suit already
exist. If that is too far-fetched, at least Section 25(1) and corresponding rules need be
amended to impose an official fee and to allow only a person interested to file a pregrant opposition. Apart from that, a limited time window, e.g., 6 months from the date of
publication, to file pre-grant opposition and/or fixed timeline to dispose the pre-grant
opposition may be introduced to keep a balance between applicant’s interest and public
interest. Otherwise, opponents as of now are practically allowed to file every year a
fresh pre-grant opposition with new prior arts or a new ground of opposition using
straw men, thereby never allowing a deserving patent to be ever granted.

Another practical issue is that there is no advance notice of grant in India. Since the
Indian patent law does not prescribe for issuance of prior notices, such as “notice of
acceptance” or “intent to grant”, there is no way for an applicant to know in advance
about the issuance of the grant of a patent. There have been instances when a patent
application has been granted straight away after the filing the response to an
examination report or within a couple of days from the filing of the written submission
to a Hearing Notice. As the provisions of The Patents Act disallow filing of divisional
applications after the grant of the main application, the sudden and un-announced grant
of patent forecloses the opportunity to file divisional applications. This, as may be
understood, is a major pain point as the applicant is left with no other remedy to pursue
divisional applications. Therefore, it would be desirable to notify the applicants about
the upcoming grant of their application, thereby providing a reasonable opportunity of
filing divisional applications before the grant of patent. To this end, The Patent Act or
The Patent Rules could be amended to have a provision for issuance of a Notice of
allowance or an intention to grant notice specifying a reasonable period after which the
patent would be issued. This would provide the applicant with a reasonable time
window to consider the filing of divisional applications before the grant of a patent.
Alternatively, a Rule could be introduced that provides the applicant with a reasonable
period post the grant of a patent, for pursuing any divisional applications.

Lastly, the consequences regarding non-compliance to certain timelines mentioned in
the Indian Patent Law are quite grave in nature. For instance, in cases where an
applicant fails to enter a national phase application in India within the stipulated period
under the PCT, the national law does not provide for any remedy to the applicant to file
the National Phase application. Likewise, there are no remedies available to an
applicant once the applicant misses on the timely filing of a request for examination of a
patent application or a reply to a First Examination Report issued in respect of a patent
application. Understanding the worth and benefits to the society associated with the
whole scheme of patent protection, it would only be fair to have provisions for
reinstatements of applications in case of missed deadlines. To serve as a remedy and in
accordance with the practices of the major jurisdictions, provisions specifying a time
period for reinstatement of the applications could be introduced along with
corresponding late fees. Likewise, a similar remedy could also be introduced to provide
the applicant with an opportunity to file National phase applications in case of missed
National phase deadlines. This would serve best to the applicant’s interest and would
also bring the currently stringent provisions at par with the best practices prevalent
amongst the major jurisdictions.

Apart from the above-mentioned issues, there are many other issues with The Patents
Act that need to be addressed. The need of the hour is to bring the Indian patent law up
to speed with the ever-changing industry requirements and technological developments
that have occurred over the years. A right step in this direction would be to do away
with obsolete and irrelevant provisions in the Patents Act, which have been actually
disincentivizing patent filing in India. This would certainly bring respite to the
applicants from unnecessary burdensome costs and would amplify the patent filings in
India.


Legislative Changes required in Indian Patents Act by Joginder Singh and Siddharth Sharma

https://www.lexology.com/library/detail.aspx?g=e8355987-4a1d-4c09-9c0e-ff53c7822353

Article was 1st published in Lexology

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