Problems relating to Trade and Investment on India

 
17. Implementation of intellectual property rights ("IPRs")
Issue
Issue details
Requests
Reference
(1) Irrational/ Nebulous Information Provision Requirement for filing Foreign Patent Application - It is incumbent upon the applicant to submit available information concerning foreign patent applications, if so required by the Director- General of the authority during the period from the filing date of Indian patent application and to the grant of the patent. "Office Action" cites USPTO, EPO, and JPO as such foreign examples. However, the examiners at Patent Office are able to access such information for all of these 3-Patent Offices' readily by using the Dossier Access System. It seems that this requirement unduly burdens the applicant.
- The countries where provision of information is required are not identified, leaving applicants unable to respond adequately to this requirement. The going Model Letter in the "Office Action" reads: "Details regarding the search and/or examination report including claims of the application allowed, as referred to in Rule 12 (3) of the Patent Rule, 2003, in respect of same or substantially the same invention filed in all the major Patent Office's such as USPTO, EPO and JPO etc., along with appropriate translation where applicable, should be submitted within a period of six months from the date of receipt of this communication as provided under section 8 (2) of the Indian Patents Act." This Model Letter fails to show the clear identity of "all the major patent office's".
- Multi-National Enterprises (MNEs) bear the extremely heavy burden of having to cope with the need to protect IPRs in numerous countries, as certain countries continue to compel disclosure of the examination information such as the fact of foreign application and the result of examination, even today, when digitisation of patent examination information has made a fair progress for public disclosure. Due to the lack of clarity in the obligation imposed by each country, the risk of unintentional violation remains as a matter of concern into the future.		 - It is requested that Indian Patent Office will obviate the need for applicant's submission of information by activating the Trilateral (USPTO, EPO, and JPO) Dossier Access System.
- It is requested that Indian Patent Office identifies the countries about which provision of information is required, should it continue the requirement for provision of information.
- It is requested that in light of advanced digitisation of patent examination information GOI:
-- deregulates or repeals the disclosure obligation for foreign patent application or
-- clarifies the details of such obligation.		 - The Patents Act, Section 8, etc.
- The Patents Act "Section 8(2) Information and undertaking regarding foreign applications"
- The Patents Act "Section 64 Revocation of patents"
(2) Unique Requirement for Submission of Statement regarding the Working of the Patented Invention on Commercial Scale in India - Indian Patent Office (IPO) requires periodical filing of a Working Statement (W/S) regarding the commercial working of the invention in India (Form 27). This requirement, not found in any other countries, is quite burdensome, as it necessitates a special work in its preparation, requiring substantial cost and person-hours.
- In India it is incumbent upon patentees to furnish information to controller concerning the domestic use of the patented invention. This information must be provided on all Indian patents the extent to which the patented invention has been commercially worked in India during 1 January to 31 March in each year. (Indian Patent Act, Article 146).		 - It is requested that GOI repeals the requirement for submission of the periodical statement as the workload is quite substantial and burdensome to the patentees. It is neither clear how W/S is actively used by the IPO, nor is it identified the necessity for the current operation.
- It is requested that GOI takes step to repeal the reporting requirement on the extent to which the patented invention has been commercially worked in India.		 - The Patents Act, Section 146(2) "146. Power of Controller to call for information from patentees"
- The Patent Rules 131(1)(2) "Form and manner in which statements required under section 146(2) to be furnished."
- The Patents Act, Section 122(1)(b). "Refusal or failure to supply information."
  (Action)
- It is Patentee's responsibility to prepare and file statements at the end of each annual fiscal term as to the extent to which the patented invention has been commercially worked in quantity and amount, in India and abroad, separately, as may be specified in the notice. (The Patents Act, Article 146 (1)). In addition, the Controller General of Patents, Designs & Trade Marks (CGPDTM) is empowered to publicly disclose the received information in the specified manner.
(3) Ambiguous Legislative Provisions on Obligations for Home Country Application - In emerging countries where growing needs for local development prevail, numerous countries continue to retain the legislative provisions on "obligation to file applications in the first country (OFAFC)", however, without a clear-cut definition. It makes it difficult to protect IPRs effectively. Today when the R&D activities encompassing multiple countries are indispensable, the risk of infringement in plural countries is a matter of concern. - It is requested that GOI:
-- deregulates or repeals OFAFC or provides its clear-cut legislative provisions, or
-- promotes deregulation for application of OFAFC requirements upon cross border R&D activity by agreements among plural countries, etc.		 - The Patents Act, Section 39, etc.
(4) Concern over the System Design on Introduction Of Utility Model System - It is said that introduction of industrial design system (IDS) is now positively under discussion, one of the reasons for this move being the backlog in the patent examination. Simplified examination under industrial design system is a matter of great concern, as it gives vent to advent of unstable rights, resulting in abuse of rights as well. - Should GOI introduce IDS in fact, it is requested that GOI:
-- compels submission of technical evaluation statement,
-- clearly identifies the object of protection under industrial design right (for example, restricting the right to form of a good, etc.).
(5) Delayed Clampdown on Counterfeits - After the clampdown and seizure of counterfeits, the police must submit to the Court the Charge Sheet. However, there are plural cases in which criminal prosecution has not begun after the lapse of more than 2-years from the counterfeits' seizure. It not only delays the solution of the case, but also makes it difficult for witness's court appearance. Moreover, timely procurement by negotiation between the parties of the source information becomes difficult. - It is requested that Controller General of Patents, Designs, and Trade Marks (CGPDTM) takes step to establish the deadline for submission of charge sheet, such as within 1-year of police clampdown.
  (Action)
- While criminal prosecution may be sought with the chief of police on counterfeits, it is also possible to obtain search and seizure warrant from lower court. Criminal proceedings take a long-time: 4-5 years in some cases, before the Lower Court decision is handed down, it is said.
(6) Inadequate IPRs' Protection in the Pharmaceutical Drug Sector - Patent is not granted on numerous pharmaceutical drugs. Even if the patent is issued, non-infringement judgement results from patent litigation. As it stands, hardly any patent protection can be hoped for.
- Counterfeit pharmaceutical drugs more often than not inflicts material health damage to patients, besides infringing upon IPRs (patent right, trademark right). Therefore, it is important to clamp down upon and keep the counterfeits out of reach of the patients. Counterfeits manufactured in PRC, India, etc. do not remain in the respective domestic markets. They widely infiltrate into the rest of the countries.		 - It is requested that GOI:
-- issues patents pursuant to agreement on TRIPS without regard to the field of technology or the place of production, domestic or import, and
-- ensures rationality and transparency in establishment of compulsory licence.
- It is requested that GOI tightens clampdown upon manufacture/sales and export of counterfeit pharmaceutical drugs.		 - Patent Act, Article 3, and 84.
(7) Delayed/ Stagnant Examination on Trademark Case - In "opposition to grant of a mark case", while trademarks act (in Article 21(2)) provides "... the applicant shall send to the registrar ... a counter statement of the grounds ... If he does not do so he shall be deemed to have abandoned his application, there are plural cases in which issuance of certificate of trademark registration remains pending for more than 5-years. - It is requested that GOI takes step to expedite examination and at once proceed with the stalled cases. - Trade Marks Act Article 21(2)
(8) Insufficient, nebulous Institutional Operation at IPI - Manoeuvrability in the search function for trademarks is poor at Intellectual Property India(IPI)/IPDL (Intellectual Property Digital Library).
- No work sharing of examination takes place in the 4-IPIs (Delhi, Kolkata, Munbai, and Chennai).
- According to the local lawyer, submission of deed of conveyance or other instrument that shows the ownership is necessary from the inventor to the employer in all patent applications filed in India in pursuance to the IPI and board of appeal guidelines.		 - It is requested that IPI takes step to:
--increase search items (enabling narrower scope of search by validity, expiration, and patentee).
--enrich status information (with notation of the latest renewal date).
- While it appears measures are being under way for movement, interchange, and exchange of personnel among the 4-IPIs, for the sake of harmonising the examination basis and the examination speed of patent applications, it is requested that IPI takes step to:
-- effect work-sharing among the 4-IPI's, and
-- standardise the speed of examination.
- It is requested that IPI takes step to deregulate or obviate, by written legislation, the need for submission of deed of conveyance or other instruments, or else deregulate the legislative provisions with simplified descriptions so that a local lawyer's preparation of a written document with his/her signature suffices.

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