The Indian Patent Office has undergone tremendous change in the last five years with digitisation of record and streamlining its procedures. As an example, a new patent application can be filed electronically and all steps during the prosecution can be taken through the patent office portal.

Further, India has agreed a Patent Prosecution Highway (PPH) with the Japan Patent Office, on a pilot basis, to expedite grant of patents. This article outlines important changes at the Indian Patent Office and court decisions in the patents domain that have helped to build a robust IP framework.

Patent Prosecution Highway

Under this programme, the Japan Patent Office can receive applications in all technical fields and the Indian Patent Office has started to receive patent applications in certain specified technical fields only, which includes electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy.

For now, pharma and chemical-related patent applications have been kept away from the PPH route, thus maintaining a balance to address public health safeguards. The programme will help to expedite examination and grant of patents, as the Indian Patent Office can rely upon search and examination already conducted by the Japan Patent Office

However, critics of the system argue that the patentability criteria will be diluted, ignoring safeguards contained in the Indian Patents Act of 1970.

Faster grant of patent applications

The long-awaited demand of applicants for faster prosecution of patent applications has now been addressed by the Indian Patent Office.

A few of the steps taken are:

• Recruitment of more than 500 patent examiners and streamlining of the prosecution process. As a result, new application/s are being granted within three years from the filing date.
• In cases where the applicant opts for provisions to expedite publication and examination of the application, the application is granted in less than one year.
• Expansion of criteria on the basis of which request for expedited examination can be filed. These include an applicant who (i) has selected India as ISA or IPEA in a Patent Cooperation Treaty application; (ii) is a startup, small entity or a natural person; (iii) in the case of joint applicant/s, all the applicants are natural persons, the applicant or at least one of the applicants is a woman; or (iv) is a government department or an institution established/owned /controlled by the government or is a government company.
• Hearings are being conducted through video conferencing, which has resulted in savings of travelling time and cost.

Patent working requirement

New guidelines are in the pipeline. The revised draft guidelines released in May 2019 by the patent office contain the following proposed changes:

1. Details of licences and sub-licences are no longer required;
2. Details of importation: The names and the specific import details of each country from where the product (in case of product patent) is imported/ process is carried out (in case of process patent) is not required to be provided. Only the approximate value of import has to be given.
3. A statement as to whether the public requirement has been met partly/adequately/to the fullest extent at reasonable price, is no longer part of the form.

The draft form also distinguishes between the product and process patents. It requires a patentee to submit approximate value for manufacturing/importing in India on the basis of the subject matter of the patent, ie, the product or process. The changes are yet to be finalised and this remains an area of concern for patentees.

Judicial developments

Ferid Allani v Union of India & Ors (W.P.[C] 7/2014)

This case dealt with the patentability of computer-related inventions (CRIs) and clarified that if the invention demonstrates a “technical effect” or a “technical contribution” it is patentable even though it may be based on a computer program.

The court observations augur well for patents being granted for CRIs as mentioned below:

• It is rare to see a product which is not based on a computer program. Whether they are automobiles, microwave ovens, washing machines, or refrigerators, all have some sort of computer programs built in. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability.
• Patent applications in these fields would have to be examined to see if they result in a “technical contribution”. If the invention demonstrates a “technical effect” or a “technical contribution” it is patentable even though it may be based on a computer program.

Communication Components Antenna v Ace Technologies & Ors (CS [COMM] 1222/2018)

This case, in relation to patent infringement of dual beam, fixed beam antennae models, analysed the impact of statements made during prosecution of corresponding foreign applications while determining infringement in India.

The court opined the variation in the language of the claims in different jurisdictions, cannot be examined in a minute fashion. The unique nature of grant of patents in various jurisdictions or the wording of claims in various jurisdictions would have only a broad impact on the Indian claims, and not more.

The patent specification and the claims are not to be interpreted literally, but purposively. The court opined the language of the claims in corresponding foreign applications can be looked at to ensure that broadly the invention is the same and no substantive claims have been either deleted or withdrawn.

Natco Pharma v Bayer Healthcare (FAO[OS] [COMM] 158/201)

The case examined whether it would be desirable to grant interim injunction in a patent infringement suit considering a patent’s term is limited and determination of a patent infringement takes a long time. As a result, not granting injunctions unfairly affects a patentee’s profits until the determination of the suit.

The Division Bench, while setting aside the order based on the above reasoning and dismissing the argument that injunctions in patent infringement are the “need of the hour”, held that the decision of an interim injunction has to indicate the view of the court on the three elements, ie, prima facie case; balance of convenience and irreparable harm; and the additional elements such as public interest when it involves a case of alleged infringement of a pharmaceutical patent.

Overall is India taking the right steps towards improving the innovation ecosystem.

 

 

 

** As published in WIPR on 28th April 2020.