Patent Law development – A Comparison

The year 2018 witnessed several progressive changes to India’s patent landscape. This article aims to highlight key developments that depict the progressive approach taken by the Indian government towards intellectual property rights (IPR) in 2018. One of the most promising advances has been to create a balance between knowledge creation and spreading awareness.

In the past year, a lot of IP awareness programmes were organized by the Indian government, for example, in association with research organizations, universities and industry associations. Cell for IPR Promotion and Management (CIPAM), which is a professional body under the aegis of Department for Promotion of Industry and Internal Trade (DPIIT), formerly the Department of Industrial Policy and Promotion, regularly organized events on issues related to IPR, aiming to tread closer to the objectives of the national IPR policy.

On the operational front, the Indian Patent Office (IPO) leaned towards technology-driven solutions – for example, by introducing the option of attending the hearing through video-conferencing – in an attempt to expedite the prosecution of patent applications while simultaneously ensuring convenience to applicants.

In August 2018, the IPO invited expressions of interest for making use of artificial intelligence (AI), block chain, internet of things (IoT), and other advanced technologies for patent processing systems. Therefore, the stakeholders can expect to see further digitization of patent proceedings in India in the near future.

In the past year, the proposal of draft rules garnered attention from all quarters. On 4 December 2018, in consultation with the IPO, the DPIIT released the draft Patent (Amendment) Rules, inviting public comment. The draft rules mainly related to international applications, expedited examinations, and pre-grant opposition.

One of the proposals was that at the time of filing an international application, the patent agents should first file all the mandatory documents electronically, and the original documents, if required, should then be submitted within 15 days from the date of electronic submission.

With regard to the expedited examination, apart from the start-up applicants and applicants selecting the IPO as the competent International Searching Authority, or as an International Preliminary Examining Authority, the facility of expedited examination may now be extended to small entities, women applicants, and government undertaking/organizations as per the proposed rules.

Further, an applicant who is eligible to file patent applications in India under an agreement –for example, through the Patent Prosecution Highway (PPH), between the IPO and another participating patent office – may also avail of the facility of expedited examination. Another significant proposal was to have a bench of controllers for deciding pre-grant opposition matters, in contrast to a single controller, as per the existing practice.

In 2018, India also took a step forward in order to offer the benefits of the PPH to applicants filing patent applications in India. On 29 October 2018, an agreement was signed between Japan and India to start a pilot programme of a Japan-India PPH. Although the PPH has yet to be implemented, this step undoubtedly kick-starts another chapter of development in IPR in India. It would be fair to expect that the introduction of PPH in India will encourage more patent filings, and that while offering quicker examination of the applications.

The IPO has also been taking commendable initiatives in partnering with IP stakeholders to augment the IP experience in India, and has regularly conducted interactive meetings with stakeholders to improve patent proceedings. Arguably, over the years, the requirement of working statement, i.e., Form 27, for granted patents has been a matter of discussion. The current format of Form 27 that is required to be filed by patentees and licensees, every year on or before 31 March, has been a subject of debate.

The issue also came up before the Delhi High Court as part of a public interest petition to bring to the court’s attention that either the working statements were not being filed or the complete information was not being disclosed in the working statement by the patentees, citing confidentiality as a reason for non-disclosure. The court therefore directed the IPO to take appropriate measures for effecting the necessary modification in Form 27 to resolve the issue.

Accordingly, in March 2018, the IPO published comments of stakeholders on bringing amendments to Patent Rules with respect to the submission of Form 27. The published comments, of course, brought in a wide range of suggestions and opinions, ranging from removal of the working statement requirements altogether to removal of the requirement of the prescribed time period for filing the Form 27.

On the other hand, there were also a few who suggested in favour of strengthening the Form 27 requirements. In the most recent development, after reviewing the current situation and suggestions, the government circulated the draft rules on 31 May 2019, with the revised format of Form 27 and the clarification that the working statement does not have to be furnished for the year in which the patent was granted.

In the past year, there has been significant development with regard to procedures of the inventions utilizing biological resources from India. One such development is that the National Biological Authority (NBA) opens a window to pursue pending issues/matters under the Biological Diversity Act, 2002 (BD Act), for the users of biological resources.

On 12 March 2018, a public notice regarding the availability of WIPO Digital Access Service (DAS) for retrieving priority documents with effect from 31 January 2018 was issued. Now, once the access code is received, applicants should request WIPO’s international bureau to retrieve the priority document from the DAS portal. Therefore, the applicant doesn’t have to re-submit the priority documents in different patent offices. They can simply inform the respective patent office to retrieve the priority documents from the DAS portal by using the access code.

In the same context, the IPO had been operating as an accessing office of WIPO CASE, a centralized platform for search and examination documents. However, since February 2018, the IPO is now also operating as a providing office. Hence, the search and examination reports generated by the IPO can now be accessed by other patent offices participating in WIPO CASE.

There were also some notable judicial developments in 2018, one of which was related to Standard Essential Patent (SEP). In 2018, India witnessed a decision by Delhi High Court on the first SEP case after a fast-track full trial. Considering that this was the first time that a fast-track full trial of an SEP case was held in India, it created a stir in the industry.

The case related to determination of infringement of a patent owned by Philips over DVD technology. The patent in question was declared an SEP by the European Patent Office as well as the US Patent and Trademark Office. The defendants were importing DVD player components and assembling them in India. The court recognized the Philips claims of the patent being SEP, and a decree of punitive damages was passed in favour of the plaintiff.

Similarly, in the matter of Koninklijke Philips Electronics NV (plaintiff) v Rajesh Bansal and Ors (defendants), in an order dated 12 July 2018, Delhi High Court decreed the suit in favour of the plaintiff for infringement of its SEP. The court recognized the essentiality of the patent related to the DVD playback technology, and awarded damages in favour of the plaintiff. These judgments involving recognition of the SEPs and associated royalty are of course quite promising for technology owners.

Clearly, recent developments in the realm of patent laws have been of a diversified nature. The efforts being made by the Indian government are quite evident and look promising for stakeholders. The IPO’s embrace of digital technology, strong and rapidly evolving legislature, and invitation of constructive involvement of the stakeholders are some of the many steps that are driving the Indian IP ecosystem towards a steady and bright road to growth and development.

The constructive efforts of the government and the patent office are also evident from the improved ranking of India in the recent Global Innovation Index, 2019, where India jumped 29 points to rank 52 in comparison to its 2015 ranking. We can definitely expect further improvements in the Indian IP ecosystem in times to come.

Patent Law development – A Comparison: India as a leading market for innovation and advanced technological development has a well-established system for IP protection. The same is highlighted in the article by Rajeev Kumar, Piyush Sharma & Pankaj Musyuni

Article was 1st published in Asia Business Law Journal