Better quality?

better-quality

Mr. Deepak Sriniwas from Lex Orbis looks at patent prosecution trends at the Indian Patent Office, Intellectual Property Appellate Board and Indian Courts.

As is customary in jurisdictions following substantial examination of a patent application
prior to grant, a patent application in India, post filing of a request for examination (RFE), is
examined by the Indian Patent Office (IPO) for its compliance with formal requirements as well as substantial patentability requirements (wherein the IPO determines as to whether the claims are patentable). After conducting such an examination and if any, objection is found, the IPO issues the First Examination Report (FER). The applicant must respond to the
objection(s) contained in the FER within a maximum period of 12 months from the date of its issuance. While 12 months is the upper limit, the FER can set out a shortened period for meeting with certain procedural requirements.

Since it is clear that an application will be examined only after a RFE has been filed, which carries a statutory time period of 48 months from the earliest priority date, an applicant who wishes to have its application examined must file the RFE well within the deadline. It may be noted that failure to file the RFE will result in irrevocable abandonment of the application. While in the past attempts have been made to seek condonation of a delay in filing the RFE, such attempts have not been favourably considered.

Abandoned applications

One of the past practices which used to create a lot of unrest among IP owners and practitioners relating to “holding the application as demand to have been abandoned under section 21 on account of failure to meet with the objections within the 12-month time period” has been scrapped by the Indian Courts in Telefonaktiebolaget LM Ericsson v Controller of Patents. The Courts found that only when an applicant does nothing by way of meeting the objections raised in an FER within the time stipulated, and does not seek extension of time for that purpose, it can be said that such application is “deemed to have been abandoned”. If
any action of the applicant proves an intention not to abandon its application the condition for attracting the deemed fiction of “abandonment” in terms of Section 21(1) of the Act, is non-existent. The aforesaid precedent has resulted in IPO offering hearings in respect of
all cases, wherein an objection is still found to be outstanding, despite expiry of the 12-month time period.

With the functioning of the Intellectual Property Appellate Board (IPAB) in relation to appeals involving patent matters, other practice followed by the IPO or the practitioners are being evaluated as to their judicial correctness. One practice which evolved as a counter measure against “demand to have been abandoned under section 21” related to filing of divisional
applications. The IPAB has set out clear language that plurality of invention is a sine qua non for maintainability of a divisional application (Sygenta Participations AG v Union of India and Others – IPAB Order No. 19 of 2013).

Hearing notices

It was observed that after the Ericsson v Controller case, the IPO started issuing hearing notices, although such hearing notices used to state that “the official requirements raised in the FER / Subsequent examination report have not been met” and therefore asked the
applicant to be present for the hearing. It was felt that not providing justified reasons for retaining the objections resulted in a lack of fairness as the objections were not clear as to which particularized objection is being retained or in respect of which particularized claim
an objection is being retained. Adjudicating on some of the matters the IPAB via its Order No. 42 of 2013 issued in respect of Thomson Reuters Global Resources v Controller of Patents, stated that the applicant must be provided a fair opportunity to defend its case, and
for this it must know what exactly are the objections. The IPAB has in multiple instances set aside the orders by the IPO and remanded the case back for fresh adjudication so that the
applicant is provided a fair hearing and all materials that have been placed before the Authority are considered prior to arriving at a conclusion. Thus, one can say that of the rulings of the IPAB are gradually resulting in communication of clearer objections in the hearing notices issued to applicants.

Technology-specific rulings

In addition to the above, technology area specific sections of the Act have also been the subject matter of interpretation by both the Courts and the IPAB. By way of example, the Courts have performed substantial interpretation of section 3(d) in the Novartis case and
have said that in order to be patentable, derivatives must exhibit improved therapeutic efficacy. The IPAB has interpreted the Act to mean that an invention in the area of computer-implemented method and business method is patentable if technical advance
claimed over the existing art is NOT falling in the excluded subject matter. Since the IPAB had observed in some instances that there is a substantial difference in the quality of examination, the IPO has in the recent past come up with Guidelines for examinations in various areas of technology. By way of example, so far the IPO has come up with Guidelines for patent applications relating to (a) Traditional Knowledge and Biological Material; and (b) Biotechnology. In addition, the IPO has released Draft Version of Guidelines on Computer Implemented Inventions.

Foreign patent applications

Last but not least, both the Courts and the IPAB have increased the standard in relation to compliance of procedural requirements stemming from section 8, which relates to informing details pertaining to corresponding foreign patent applications. While the Courts have repeatedly held that non-compliance with section 8 is a ground for revoking a patent, the IPAB has in multiple instances refused a patent application or revoked a patent on account of blatant non-compliance by the applicant. While in the past decade, the IPO has progressed substantially in terms of the quality of examination conducted, which is clearly
evident from the objections posted in the FERs, one can say that there is still scope for improvement and hope for such improvements on a fast-track basis.

Résumé

Deepak Sriniwas
‘Mr. Deepak Sriniwas with experience of over a decade in Intellectual Property Law is the Head of the Patent Prosecution practice at Lex Orbis. He is an expert in drafting, filing and prosecuting patent applications across jurisdictions and forums like India, PCT, USPTO and EPO. He regularly advises national and international clients on filing and prosecution strategies in India and freedom-to-operate matters.

Deepak has also been involved in negotiations of Technology Licenses and Technology Transfer Agreements and has advised several automobile companies on the structuring of Technology License and Technology Transfer Agreements. He is a registered patent agent and patent attorney. He holds a Bachelor’s degree in Electronics and Communications, a PG Diploma in Business Administration and a Master’s degree in Energy and Environment’.