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Indian Patent Office Update – Deadlines and Time Period

Indian Patent Office has published a notice on June 19, 2020 stating that all deadlines stand suspended. This is based on Delhi High Court’s order dated 21.05.2020, and the notice states that all the timelines or periods for the completion of various acts or proceedings as required under the Patents Act, including, filing of any reply or document, payment of fees, etc. falling due after 15.03.2020, shall be the date as decided/or ordered by the Hon’ble Court.

Patent Office Developments

A few dynamic changes to India’s landscape were seen in the year 2018. A lot of IP awareness programs were sorted out by the Indian government, for instance, in association with research organizations, universities, and industry associations. Cell for IPR Promotion and Management (CIPAM), which is an expert body under the aegis of Department for Promotion of Industry and Internal Trade (DPIIT), previously the Department of Industrial Policy and Promotion, normally organized events on issues associated with IPR, planning to step nearer to the objections of the national IPR strategy.

Video Conferencing Virtual Hearings

Since last few years, the patent office has been providing an option of attending the hearing through video-conferencing, which is an attempt to accelerate the prosecution of patent applications while at the same time guaranteeing convenience to applicants. In August 2018, the IPO invited expressions of interest for making use of artificial intelligence (AI), blockchain, internet of things (IoT), and other progressive technologies for patent processing systems.

In December 2018, in consultation with the IPO, the DPIIT released the draft Patent (Amendment) Rules, inviting public comment. The draft runs chiefly identified with international applications. One of the recommendations was that at the time of filing an international application, the patent agents should initially record all the obligatory documents electronically, and the original documents, whenever required, should then be submitted within 15 days from the date of electronic submission.

Patent Prosecution Highway (PPH) in India

An applicant who is entitled to file patent applications in India under an understanding, for instance, through the Patent Prosecution Highway (PPH), between the IPO and another joining patent office, may likewise avail of the facility of expedited examination. Another noteworthy proposition was to have a bench of controllers for choosing pre-grant opposition matters, rather than a single controller, according to the existing practice.

In 2018, India additionally stepped forward so as to offer the advantages of the PPH to applicants filing patent applications in India. An understanding/ agreement was signed between Japan and India to begin a pilot program of a Japan-India PPH. It is reasonable to expect that the presentation of PPH in India will encourage more patent filings and that while offering a faster examination of the applications. The IPO has additionally been taking estimable initiatives in partnering with IP partners to expand the IP experience in India and has routinely directed interactive meetings with partners to improve patent procedures.

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There additionally has been a huge improvement with respect to techniques of the innovations using biological resources from India. One such advancement is that the National Biological Authority (NBA) opens a window to seek after pending issues/matters under the Biological Diversity Act, 2002 (BD Act), for the users of biological resources.

International Patent Applications

In March 2018, public notice with respect to the accessibility of WIPO Digital Access Service (DAS) for recovering priority documents was given after which the access code is received and afterward the applicant requests WIPO’s international bureau to recover the priority documents from the DAS entry.

In this manner, the applicant doesn’t need to re-present the priority documents in various patent offices. They can just advise the patent office to recover the priority document from the DAS portal by using the access code. In a similar setting, the IPO has been working as an accessing office of WIPO CASE, a centralized platform for search and examination documents. Although, the IPO is currently also working as a providing office. Henceforth, the search and examination documents created by the IPO would now be able to be accessed by other patent offices as well.

Standard Essential Patents

There were also some remarkable judicial improvements, one of which was identified with Standard Essential Patent (SEP). In 2018, India witnessed a decision by Delhi High Court on the principal SEP case after a fast-track full trial. Taking into account this was the first time when a fast-track full trial of a SEP case was held in India. The case related to the purpose of infringement of a patent owned by Philips over DVD technology. The patent in question was declared a SEP by the European Patent Office along with the US Patent and Trademark Office. The defendants were brought in DVD player components and accumulating 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. The efforts being made by the Indian government have been quite evident and are promising for stakeholders or partners. The IPO’s hold of digital technology, strong and rapidly developing legislature and invitation of constructive involvement of the stakeholders or partners are some of the many steps that are motivating the Indian IP ecosystem to a stable and bright path to growth and development.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.