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IP protection in the autonomous vehicle space

Written by adminApril 23, 2020

Autonomous technology is one of the most significant developments in the transportation sector. A growing number of automotive and electronics organisations across the world are working with new clients to create self-driving vehicles and the race is heating up to own IP rights and protect various technological advancements in this domain. The rate of patent application filing in this area is unprecedented as automotive sectors work hard to strengthen their patent portfolios.

Autonomous vehicles and IP protection

An ‘autonomous vehicle’ is defined as a vehicle that can sense its environment and operate without human intervention. According to the Society of Automotive Engineers International, there are five levels of development, from Level 0 (ie, no automation) to Level 5 (ie, full autonomy) (standard J3016). Autonomous vehicles rely on sensors, actuators, complex algorithms, machine-learning systems and powerful processors to execute software. However, since 2014, when the US Supreme Court handed down its decision in Alice Corp v CLS Bank International on subject-matter patentability, obtaining patents that are based on algorithms and software has become more complicated. As a result, most autonomous vehicle companies keep their technologies and machine-learning data as trade secrets. Opting for trade secret protection can provide a significant advantage over a competitor, as it allows the entity to continue improving its products by channelling resources directly to their development. Also, this form of protection is not nearly as expensive or time consuming as the patent prosecution process. But trade secrets can have their disadvantages as competitors can sometimes reverse-engineer software algorithms. Second, keeping autonomous vehicle data secret means that consumers and authorities are unable to fairly and completely evaluate the proficiency and safety of the AI systems that guide the vehicles, as these entities are highly dependent on anecdotal evidence.

Another major challenge is that patent laws are deficient when it comes to securing protection for autonomous vehicle frameworks. For example, patents cannot be utilised to secure machine-learning data, AI preparing sets or a software engineer’s specific articulation of source code. Further, given the AI process used in autonomous vehicle frameworks and iterative/gradual advancement of the hidden calculations, it is often difficult to precisely portray the strategies or elements of an autonomous vehicle framework as required for a patent grant. An innovation can qualify for patent protection if it:

  • improves computer hardware innovation;
  • is a current mechanical procedure linked with electronic sensors and actuators; or
  • is a practical application that improves the working of autonomous vehicles

Comment

It is worth bearing in mind that this field is developing at such speed that that a patent may be futile or out of date by the time it is issued. Obtaining IP protection for autonomous vehicles and related advancements necessitates cautious contemplation. In order to continue building important IP assets for vehicular equipment or assembling forms, organisations must update their IP strategies. This depends on ongoing patent case law and requires considering proposed changes to existing patent resolutions to decide how to best secure programming-based developments for patents, trade secrets and copyrights. IP protection for autonomous vehicles is as inventive as the field itself, and the law will continue to develop rapidly.

For further information contact:

Utkarsh Tomar
Effectual Knowledge Services Pvt Ltd
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Section 3 of Indian Patent Act: Importance and Interpretation

Written by adminApril 22, 2020

Invention(s) not Patentable

As per Indian Patent Act, all inventions should fall under patentable criteria for patenting process.

The patentable criteria are “Novelty”, “Inventive step” and “Industrial Application”. Further in addition to possessing the above criteria, the invention should also not fall under Section 3 related to non patentable subject matter and Section 4 related to atomic energy.

Section 3 defines “What are not inventions” – this section clearly describes that if it is not an invention, then it will be a non-patentable concept & does not fulfil patenting criteria. Therefore, a patent application may not be filed if it comes under any subsection / categories in this section. There are 15 subsections starting from Section 3(a) – Section 3(p).

The following subsections are not inventions within the meaning of this Act, therefore not patentable under Indian Patent Act 1970. The examples are provided as mere illustrations and may not be concluded on the basis of these examples. There may be subjective decisions which may be taken depending on a particular case.

Section 3 (a) “An invention which is frivolous or which claims anything obviously contrary to well established natural laws”

3(a) reveals that any invention which seems frivolous which means lacking real purpose or importance or which becomes contrary to well-designed natural laws. For example:

  • A machine appearing to give rise to persistent motion
  • A machine claiming for giving the output without taking any input
  • A machine claiming 100% efficiency

Section 3 (b) “An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment”

Few examples explaining section 3(b) may include the following:

  • Any machine used for performing theft or burglary
  • Any device or machinery apparatus which assist in counterfeiting of currency notes.
  • Gambling device/machine/ apparatus related inventions
  • Inventions related to any machine/apparatus or article, the use of which may cause serious prejudice to mankind, animals or animals
  • Adulteration of food products or pesticides related inventions
  • An invention related to cloning of humans
  • Any invention related to device for house-breaking

Section 3(c) “The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature”

Discovery means “an action or process of discovering or being discovered” – this is discovery of something which was existing previously in nature & someone has simply found it. Few examples explaining section 3(c) may include the following:

  • An invention claiming “discovery of scientific principle” is not considered to be an invention, hence non-patentable.
  • An invention based on “scientific theory” is non-patentable as these theories may not considered to be inventions, it does not matter how insightful is the theory. However, any practical implication or application depicting such theory, which uses the abstract theory may be patentable.
  • Acquiring a new substance or micro-organism which was occurring freely in nature is a discovery and can never be called as an invention.

Section 3 (d) “The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Explanation. -For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy”

Section 3(d) clarifies that salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substances may be considered as to be the same substance and can be patentable only if they differ significantly in properties with regard to efficacy.  According to section 3 (d), following are not inventions and non-patentable:

  • Mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance.
  • Mere discovery of any new property of a known substance
  • Mere discovery of new use for a known substance
  • Mere discovery of use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Section 3 (e) “A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance”

An ad-mixture resulting in synergistic properties is not considered as mere admixture. Hence, substances like soap, detergent, lubricants, may be considered as patentable.

Section 3 (f) “The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way”

An invention claiming a mere re-assembly of known devices in which each device will act independently is not eligible for being patentable. For example,

  • A flour mill made with sieving means
  • A fan integrated with light and claiming an invention for providing air flow and light.
  • An apparatus for giving rise to metallic bellows, the hydraulic machine and the roll forming machine claiming to act as separate machines functioning independently of each other

These above concepts are not patentable, since there is mere arrangement and rearrangement of the parts of assembly without having any working interrelationship between them and every part of assembly is working independently of each other.

Section (g)…(has been Omitted)

Section 3 (h) “A  method of agriculture or horticulture”

Few of examples where the subject matter is excluded from patentability under this provision are:

  • Plant manufacturing method , Green house effect (modification too)
  • Improved soil generation method, the method is soil treatment from the soil with nematodes
  • A method of generating mushrooms
  • A method of algae cultivation
  • Weeds removal methods

Section 3 (i) “Any process for the medicinal, surgical, curative, prophylactic,  diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals  to render them free of disease or to increase their economic value or that of their products”

Few examples explaining section 3(i) may include the following:

  • Medicinal methods: Administering medicines process orally
  • Surgical methods: Cataract operation
  • Curative methods: Cleaning plaque process
  • Prophylactic methods: Vaccination method
  • Diagnostic methods: X-ray, Blood diagnostic process
  • Any method of treatment of animal to render them free of disease or to increase their economic value or that of their products. For example, a sheep treatment method for increasing wool yield
  • Cosmetic surgery/ methods

Section 3 (j) “Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals”

The following subject matters but not limited to are excluded under section 3(j):

  • Plants as whole or in part of plants
  • Animals as whole or any part of animal
  • Seeds
  • Plants and animals varieties/ species
  • Biological process(es) for production or propagation of plants and animals.

However, Microorganisms, other than the ones discovered from the nature, may be patentable.

Section 3 (k) “A mathematical or business method or a computer programme per se or algorithms”

Under section 3(k), a mathematical methods, business methods, computer programmes per se and algorithms are not considered as patentable subject matter.

Section 3 (l) “A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions”

Following type of work comes under the domain of Copyright Act, 1957, hence not-patentable

  • Literary works
  • Computer programs
  • Music/ Sound recordings
  • Paintings, Drawings, Architecture, Photographic works etc.

Section 3 (m) “A mere scheme or rule or method of performing mental act or method of playing game”

Mere scheme or rule or method of performing mental acts or method of playing games, are not patentable because these simply comes from human mind. For example:

  • Method for playing chess
  • Teaching method.
  • Any method for learning

Section 3 (n) “A presentation of information”

Presentation modes like presentation methods by using Audio Visual Aids are not considered to be invention, hence non-patentable. For example: railway time tables and 100 years of calendar etc.

Section 3 (o) “Topography of integrated circuits”

As there is another branch of Intellectual Property Rights i.e. Semiconductor IC Lay Out Design Act, 2000, therefore all inventions related to IC circuit designs are not patentable. The applicant is such matters should file IC circuit designs as per IC Design Act 2000. For example, 3D configuration of the IC circuits being used in microchips and  semiconductor chips are not patentable.

Section 3 (p) “An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components”

Traditional knowledge means knowledge which was already existing (in prior art). This knowledge was with public from a long/ ancient/ historical and passed from generation to generation. For example, Usage of Turmeric / Haldi as antiseptic i.e. for wound healing. Another example is Neem being used for pesticidal or insecticidal activities.

The Patent examiner may conduct investigation by using TKDL i.e. Traditional Knowledge Digital Library which is an excellent database for checking traditional knowledge and other similar resources/database which help applicant to take a decision about whether the claimed subject invention comes under Section 3(p) or not.

Thus, any invention/ inventive concept which comes under section 3(a) –Section 3(p) are non-patentable. Therefore, applicants/inventors should always verify whether the inventive concept is falling under the above-mentioned sections or not. Also, Indian patent agents should also make sure that the inventions for which patents are required to be filed do not fall into above sub-sections under Section 3.

However, as the patents are territorial and every country has it’s separate provisions regarding interpretation of sub-sections specially Section 3(i). For example, inventions related to “method of treatment” are allowable/patentable in US and Australia whereas “method of treatment” is not patentable in India, EP Japan, Korea etc.

References:

ABOUT THE AUTHOR:

Dr. Amit Goel, Director and Jyoti Chauhan, Manager at Effectual Services.Views expressed in this article are solely of the author and do not reflect the views of either of any of the employees or employers.

For any query related to Non patentable inventions, please feel free to contact us at amit.goel@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Restoration of Lapsed Patents: An Indian Patent Perspective

Written by adminApril 17, 2020

Introduction

Patent is granted for a term of 20 years from the date of filing of a patent application. Once the patent gets granted, the patentee need to ensure about the payment of renewal fee pending every year. The patentee should always keep a note of the deadlines and track it in order to ensure that patent remains in force. In situations where renewal fee has not paid with in a prescribed period, the patent may be lapsed (Section 53(2)) & then the patentee need to apply for restoration of lapsed patent under specific conditions.

Section 53(2) states “A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed”.

Patent Renewal Fee

The renewal fee as applicable as per Indian Patent Act and should be paid before the expiration of the 2nd year from the date of patent in respect of THE 3rd year. Thereafter, renewal fee should be paid before the expiration of every succeeding year. However, this period may be further extended by 06 months more by applying extension of time.

In cases where the patent gets granted after completion of 02 years from the filing date of patent application, then the maintenance fee need to be paid within 03 months from the date of recordal of grant in the register of patents. Also, it may be further extended for a duration of not more than 09 months from the date of recordal of grant of patent in the patent register.

Patent not Renewed on time / Patent Lapsed

If the patentee does not submit the renewal fee at Indian Patent Office (IPO) within the prescribed period and also do not pay renewal fee within the extendable period of 06 months by applying extension of time, the patent thereafter ceases to have effect or that patent gets lapsed from the date of expiration.

In cases where any individual/ company do not pay renewal fee, the patent may thereafter get lapsed or ceased to exist. The patent and the subject matter covered in the patent thereafter will come into public domain and not protected. The subject matter of the concerned patent may be used by any person without any fear of infringement. Further, the lapsed patent may be restored within 18 months from the date of lapse.

How to apply for Restoration of Lapsed Patents

The Patent owner or the legal representative of the patent can apply for restoration of lapsed patents  in a prescribed manner. In few particular cases, where the patent had been filed by two or more persons jointly, then with the leave of the Controller, one or more of them, without joining others, may submit the application for restoration at Indian Patent Office (IPO) within 18 months from the patent cessation date (Section 60(1)).

A one-month extension may also be availed under Rule 138 of Patent Rules, which is a discretionary power of the Controller.

Section 60: (1) “Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within that period as extended under sub-section (3) of section 53, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent”

(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.

A petition needs to be applied regarding the restoration of lapsed Patents at IPO. Here the patentee needs to submit reason, circumstances and evidences under which there was delay in payment of the renewal fee. The restoration is accepted by the Controller once he/she gets convinced with the reasons, evidences & circumstances submitted by the patentee for justifying the delay in paying renewal fee was intentional. Thereafter the application for restoration is then published in Patent Official Gazette (Rule 84(3)).

The application for restoring lapsed patent should also be accompanied with a statement explaining the circumstances under which failure of non-payment of the renewal fees was done. The additional fees should also be submitted with proof or evidences to prove that the delay was not intentional. The patentee may also prove that there has been no undue delay in filing for restoration. The Controller thereafter if required, may call for further proofs like-evidences, which may comprise of letters, deeds etc. Thereafter, after getting satisfied with grounds/evidences submitted by the patentee, the Controller of patents may pass the application for restoration of lapsed patent and then the controller may pass order for publication of the restoration of the patent in the IPO / Patent Journal. The publication would be  open to public inspection regarding  oppositions for 02 months duration starting from the date of publication of application of restoration of lapsed patent.

In the matters where oppositions are filed against application for restoration of lapsed patent, then the Controller would inform the patent owner of the concerned patent and thereafter schedule hearing before taking final decision regarding restoration.  After publication of application for restoration, if no opposition against restoration is filed, the patent is allowed to be restored and the renewal fees need to be paid along with additional fees, if any. The renewal fee is required to be paid within 01 month counting from the date of passing allowance of the decision by the Controller regarding restoration. Such decision would also be published in the official gazette of IPO.

In another situation, Controller may not allow the restoration of patent, the patentee thereafter request hearing to the Controller.

Requirements for Applying Restoration of Lapsed Patents

  1. Form – 15 is required to be filled with prescribed fees (u/s 60, Rule 84).
  2. Evidences / Proofs are required to be submitted to prove the fact that the non-payment of renewal/maintenance fee was unintentional.

Requirements for Opposition for Application of Restoration of Lapsed Patents

  1. Form 14: Any person interested may file opposition for restoration of lapsed patent by submitting this form along with the prescribed fee.

Rights of Lapsed Patents which Gets Restored

Once the lapsed patent is restored, the patentee rights of the patent owner will be subject to provisions as may be prescribed by the Controller in his/her decision. Also, the Controller may provide other provisions as he/she finds fit to imply for the protection of compensation of persons who may have started to avail them of between the dates or the time duration starting from the time when the patent ceased to have effect and the date of publication of the application for the restoration of patent (Section 62(1)).

Once patent gets lapsed, the patent owner loses his patent right as per the Indian Patent Act and the claimed patented invention becomes public property and anyone may also commercialize it. It should be also noted that, no suit or proceedings may be commenced or prosecuted with respect to patent infringement between the time duration i.e. date of patent cessation and publication date of application for restoration of patent.

 

Section 62 (1)  Where a patent is restored, the rights of the patentee shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the patented invention between the date when the patent ceased to have effect and the date of publication of the application for restoration of the patent under this Chapter.

 (2)  No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of the publication of the application for restoration of the patent.

Conclusion

Once a patent gets granted, the patentee need to be diligent about the payment of renewal fee pending every year. In cases where renewal fee has not paid with in prescribed period, the patent may get lapsed & one need to apply for restoration of lapsed patent under specific conditions. The Controller takes decisions regarding the restoration based on the documents submitted by the patentee.  The Controller examines the application of restoration and if he/she gets convinced that reason for delay was unintentional and there was no undue delay in making application for restoration, the lapsed patent may be restored subject to opposition proceedings, if any. Restoration of a lapsed patent comprises many prejudiced decisions that are required to be taken by the Controller of patents. Therefore, the patentees are advised for being vigilant regarding patent renewal deadlines.

ABOUT THE AUTHOR:

Dr. Amit Goel, Director and Jyoti Chauhan, Manager at Effectual Services.

Views expressed in this article are solely of the author and do not reflect the views of either of any of the employees or employers. For any query related to Restoration of lapsed patents in India, please feel free to contact at amit.goel@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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New tools and advancements in biological sequence searching

Written by adminApril 16, 2020

Biological molecules play a significant role in both human and animals and it thus necessary to apply knowledge of biological molecules for healthcare, pharmaceutical, diagnostics and biotechnology purposes. These biological molecules are formed of DNA, RNA or protein, which are built from a continuous chain of nucleotide bases or amino acids – called a biological sequence.

For many years, bacteria or viruses have been of intense interest to researchers. Biological sequence research helps to provide greater understanding of their pathophysiology, which in turn guides researchers to develop therapeutics or diagnostics for the diseases caused by these bacteria or viruses.

There are two forms of biological sequences:

  • A nucleotide sequence is a series of alphabetical letters that indicate the order of nucleotides within a DNA or RNA molecule, wherein nucleotides in genetic sequence are adenine (A), cytosine (C), guanine (G), thymine (T) and uracil (U). The sequence can be made of thousands of base units of nucleotide sequence or a protein sequence. Moreover, a nucleotide sequence can form a primer, probe or a biomarker with therapeutic or diagnostic applications.
  • Amino acid sequences can form proteins, antibodies, enzymes and receptors of varying length (from 100 to 1,000 amino acids).

Exponential growth in research related to nucleotides (DNA, RNA) or proteins has occurred in the pharmaceutical, agriculture and biotech industries. Therefore, a surge has been observed in patent filings encompassing nucleotide or protein sequences. Currently there are more than 40,000 patents related to DNA molecules as the entire human genome has given way to monetisation by various companies. Nearly 20% of the human genome of the known 23,688 human genes have been patented, with over half owned by private companies. In order to protect a biological sequence through a patent, regional patent offices all have specific guidelines for listing nucleotide or peptide sequences separately and in a proper format while submitting the patent applications. The most widely used format for patent submission is FASTA – a text-based format for representing nucleotide sequences or peptide sequences. Some of the rules and regulations laid by patent offices for sequence listings are as follows:

  • The sequence listing shall be referred to by the sequence identifier that is a unique integer, which corresponds to the SEQ ID NO assigned to each sequence in the listing.
  • If provided on paper, it shall have independent page numbering; if furnished in electronic form, it shall be in an electronic document format and filed by a means of transmittal.
  • A nucleotide sequence shall be presented only by a single strand, in the 5’-end to 3’-end direction from left to right. The terms 3’ and 5’ shall not be represented in the sequence.

Due to the high volume of research, IP experts need the functionality of sequence searches in order to identify patents as well as scientific articles. There are a number of IP projects wherein sequence searching is required. For instance, a patentability search before getting a sequence patented, freedom-to-operate searches before launching a product in the market, infringement search or product clearance searches and invalidation searches to assess the validity of sequence-claimed patents. To perform searches for patents with sequences, a sequence alignment exercise is needed. Sequence alignment uses an algorithm (eg, Basic Local Alignment Search Tool or BLAST) to establish similarity between two sequences – so-called character-to-character matching. BLAST is an algorithm for comparing any biological sequence (eg, amino-acid sequences of proteins or nucleotides) against a list of other sequences.

Many patent offices offer publicly available software to standardise biological sequence submission formats. For example, BiSSAP was developed by the EPO in collaboration with national patent offices and the European Bioinformatics Institute, whereas PatentIn has been developed by the USPTO.

The IP community encounters difficulties when an invention or product features cover biological sequences because none of the conventional strategies (ie, keyword or class-based searches) provide the functionality to search patents or scientific articles containing sequences based on the mapping of biological sequences. In the past years, some tools and services were introduced by various platforms (eg, NCBI) to facilitate sequence searching, which can provide a starting line to quickly achieve out of the box results. Some freely available databases (eg, NCBI-BLAST and PatentLens) are also in line, particularly PatentLens, which allows over 80 million DNA and protein sequences disclosed in patents to be searched.

However, certain challenges are still associated with sequence searching, including non-editable sequences, lack of uniformity in submission of sequences and access to the full text of scientific articles. Also, it is difficult to access patented sequences especially for foreign jurisdictions. There is a lack of fast and accurate sequence alignment tools to identify sequences disclosed in patents.

In an effort to overcome these hurdles, some advancements and modifications have been taken by the industry to improve sequence search capability, which can help the IP community not only to map the sequence but also to provide a percentage of alignment of sequence bases. This limited number of available paid tools (eg, STN and GenomeQuest) have the capability to search sequences by integrating multiple databases in a single platform, so that searchers can perform sequence searches for patents of multiple jurisdictions along with other parameters (eg, chemically modified radionucleotide molecules).

Despite such improvements, there are still a few challenges that remain, including cost and lack of expertise. We can search scientific articles containing sequences but access to the full text is not always available. Therefore, a vast gap exists for advanced tools across the globe.  This is causing private institutions to agonise over building databases with sequence-search features in their dashboards, which can be an alternative for IP practitioners, science graduates and industry scientists.

Comment

In order to discuss the future prospects of sequence searching, new tools need to be developed to help make searches more accurate with a variety of alignment algorithms to optimise workflow, work accuracy and efficiency. Looking forward there is the promise of sequence searching in all jurisdictions as well as searches for scientific articles in a cost-effective, graphical user interface, with a genome library (of various plants, organisms and animals) being integrated into databases. However, it remains to be seen when and how these will become available.

For further information contact:

Anoop Dimri
Effectual Knowledge Services Pvt Ltd
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Early Publication of Patent Applications in India: Provisions, Importance and Current Scenario at Indian Patent Office (IPO)

Written by adminApril 14, 2020

Publication of Patent Application

Once a patent application gets filed at Indian Patent office (IPO), the patent application is automatically published in the Official Gazette after 18 months of completion from the date of filing or priority date (Section 11A(1), Rule 24). Thereafter, it becomes available for public inspection. The publication is done on every Friday in the Official Gazette.

 “Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed for such period as may be prescribed”.

The publish patent applications can be accessed from the following link: http://ipindia.nic.in/. This database generated by the Indian Patent Office is having currently all Patent Journals issued from 2005 onwards. Before 2005, the Patent Journals may be accessed from the IPO library physically. Following particulars of a patent application are provided while publication in Official Gazette (Section 11A(5)) :

  • Application number, Applicant Name and Address, Title of the invention, Priority details, Abstract

The date of publication is very important as it provides privileges and patent rights as if the patent has been granted on the date of publication of patent application, however infringement proceedings may be only run in court after date of grant (Section 11A(7))

 “On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application:

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:

Provided further that the rights of a patentee in respect of applications made under sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of grant of the patent:

Provided also that after a patent is granted in respect of applications made under sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable royalty from such enterprises which have made significant investment and were producing and marketing the concerned product prior to the 1st day of January, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceedings shall be instituted against such enterprises”.

Early Publication of Patent Application

An applicant may file request for early publication using Form 9 and submit it to IPO for publication (Section 11A(2)). Such patent applications would be published within 1 month from the date of making such request for early publication (Rule 24A).

Provisions – How to Apply for Early Publication for Patent Application

Patent applicant is only eligible to make request for early publication of a patent application. One is required to file Form 9 along with requisite fee as prescribed by IPO.

As per Section 11A(3), every patent application would be published excluding only cases where the secrecy directions have been imposed against a patent application (Section 35) or a patent application has been abandoned (Section9(1)) or a patent application has been withdrawn 03 months before the specified period i.e. 18 months.

“Every application for a patent shall, on the expiry of the period specified under sub‑section (1), be published, except in cases where the application–

(a) in which secrecy direction is imposed under section 35; or

(b) has been abandoned under sub‑section (1) of section 9; or

(c) has been withdrawn three months prior to the period specified under sub‑section (1)”.

Further, as per Section 11A(4), in case of secrecy directions imposed under Section 35, patent application would only be published once secrecy directions have ceased to operate or if the  period as specified under Section (1) gets expired whichever is later.

“In case a secrecy direction has been given in respect of an application under section 35, then it shall be published after the expiry of the period prescribed under sub-section (1) or when the secrecy direction has ceased to operate, whichever is later”.

Additionally, when a patent application is related to biological inventions, then while publication of such patent application, applicant should reveal the biological material in the specification and depository institution should make such biological material(s) available for public and IPO should make specification and drawings of such patent applications available to general public (Section 11A(6)).

Advantages of Early Publication

  1. Faster Prosecution Time: Patent application gets only examined once request for early publication has been submitted. In matters where the complete application has been filed with Form-9 and Form-18 (Request for Examination) at the time of filing, the IPO publishes the patent application within 1 month and FER (First Examination Report) gets issued faster.
  2. Patentee Rights: A patentee can only file suits or other types of infringement proceedings against the infringing party once the patent gets granted, however, the patentee rights get into action only after the date of publication of a patent application. Therefore, in the first instance of making request of early publication at the time of filing the patent application, the patentee gets “extra” time for claiming damages against potential patent infringers.
  3. Acts as a Prior Art: The patent applicant who is interested in accruing his patent rights at an earliest may take advantage of detracting his competitors by making his invention/application public and ensuring the patent application acts as a prior art reference for other similar inventions.
  4. Discouraging Competitors: The provision of early publication provides access to the invention for public inspection as well as for the potential competitors in a related technology domain. This could detract the competitor(s) from thinking about published patent application with a similar product or process.

Disadvantages of Early Publication

  1. Official Fees: There is additional cost for applying request for making early publication, otherwise it will be automatically published in general cases after 18 months of completion.
  2. Withdrawal of Patent Application: There is a provision in IPO to withdraw a patent application within 15 months of filing the application. This choice is not applicable when it has been already published.
  3. Pre-grant Opposition risk: Any person/applicant may file pre-grant opposition once the patent application gets published till the time patent gets granted if the examination fee has also been paid by the applicant. Therefore, early publication provision gives more chances and more time for the opponents for filing pre-grant opposition.

Conclusion

It should be appreciated that based on Applicant’s interest and actions taken, the early publication provision may be exercised at the discretion of Applicant in order to enrich value of the patent. The patent publication date is important as the applicant’s advantages as well as patent rights start into consideration from the date of patent publication.   It should be also be noticed that the early publication seems to be effective non-expensive method to expedite the prosecution process.

About the Author

Dr. Amit Goel, Director and Jyoti Chauhan, Manager at Effectual Services.

Views expressed in this article are solely of the author and do not reflect the views of either of any of the employees or employers.  For any query related to Early Publication in India, please feel free to contact at : amit.goel@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Blog, Brand Valuation, Compulsory Patent License, IP industry, Patent, Patent Opposition

Patent Opposition System in India: Grounds, Provisions and Current Scenario at Indian Patent Office (IPO)

Written by adminApril 9, 2020

Introduction

For invalidating a patent, there are time consuming and expensive patent litigation proceedings in various  jurisdictions around the world. Another way for invalidating a competitor’s patent application / granted patent can be through patent pre and post grant opposition  proceedings. That is, one may challenge a pending patent application (prior to grant) or after patent is granted. Indian Patent Act 1970 provides opposition provisions wherein a party (“opponent”) may oppose a patent application before grant of patent which is called “pre-grant opposition” and the oppositions which  are filed after the grant are called “post-grant opposition”.

Patent Opposition Provisions

In India, both oppositions (pre- grant and post-grant), proceedings takes place in front of Controller General of Patents, India. The main advantage of filing opposition proceedings in Indian Patent Office is that it is time-specific and therefore the interested parties/opponents need not to undergo time consuming expensive lengthy procedures as conducted in Courts. The involved cost in oppositions is also minimal as compared to litigation cost in Courts.

The pre-grant opposition provides detailed information to patent examiner which could  prevent grant of patent for ineligible patent matter which does not qualify either  patentability criteria or other procedural/ formality requirements as per Indian Patent Act. Further, in pre-grant proceedings, hearing is not mandatory, however, in post-grant proceedings, based on hearing, the controller takes decision for a patent.

Sections 25(1) and 25(2) of the Indian Patents Act 1970 discloses grounds for proceedings before the Controller General of Patents, India. The grounds for pre-grant and post-grant oppositions are almost same and there is no restriction for filing pre-grant opposition thereafter filing post-grant oppositions; however, there are few procedural differences between the two oppositions.

Pre-Grant Opposition

According to Patent Amendment Rules 2016, once a patent application gets published, any person can file a pre-grant opposition before grant of the patent by filing Form 7A (under Sec. 25(1)). There is no official fee for filing pre-grant opposition. One needs to file and submit written representation to the Controller of Patents including statement and evidence(s). The applicant is given three months to file a reply to representation from the receipt of notice from the Indian Patent Office.  Based on the representation submitted by opponent and reply submitted by the applicant, the controller may schedule hearing, if required. The Controller may either refuse or grant the patent application; or suggest requests for amendment of specifications/claims to the applicant after completion of opposition proceedings.

Post-Grant Opposition

Any interested person as defined under Section 25(2) of the Indian Patents Act, may file notice of opposition i.e. with prescribed Form 7 within one year from grant date which is mentioned in Patent Journal i.e. Date of Publication of Grant along with payment of prescribed official fee. The notice of opposition must disclose following items:

  • The nature of the opponent’s interest;
  • The facts under which opposition is done; and
  • The relief which the opponent seeks

Thereafter, patentee may challenge the opposition by filing a reply statement within two months from the receipt of the opposition notice. After that, the opponent may file further evidences within one month of receipt of reply by the patentee. In case where the patentee do not submit reply of opposition notice, then in absence of any reply by the patentee, the patent may be deemed to be revoked/ abandoned.

On receipt of a notice of opposition, the controller may thereafter form an opposition board, which further comprises of three members, including one chair member. The opposition board analyses the opposition facts, opposition statement in detail and then sends its recommendations to the controller within three months. Based on the recommendations of the opposition board, the controller takes his decision, however these recommendations are not binding opinion to the Controller, but if the controller is of opinion that is contrary to the recommendations of the opposition board, then the controller passes a reasoned order  which contains his or her analysis and detailed analysis. The controller may also schedule a hearing between both parties and takes a decision for the patent to be revoked, maintained or amended.

The final decision taken by the controller of patent related to regarding a pre-grant or post-grant opposition may be further appealed to the Intellectual Property Appellate Board (IPAB). The time limit for making such appeal is within three months of the date of the decision..

  • Grounds of Opposition:

Section 25 discloses various following grounds for opposition:

  • Lack of novelty (i.e, the invention was previously published in India or elsewhere, or was previously claimed in India i.e. anticipation by prior date, Prior claiming in India).
  • The invention formed part of the prior public knowledge or the prior public use or traditional knowledge of any community.
  • Obviousness and lack of inventive step i.e. the invention is obvious and lacks inventive step.
  • Ineligibility of invention (i.e., the subject of a claims does not constitute an invention within the meaning of the Patents Act or is not patentable under the act).
  • Failure to disclose information or furnishing false information relating to foreign applications filed by the applicant for the same or substantially the same.
  • Wrongfully obtaining the invention.
  • Insufficiency of description of the invention.
  • Non-disclosure of information as per the requirement or providing materially false information by an applicant.
  • Patent application not filed within 12 months of filing the first application in a convention country.
  • Nondisclosure/ wrong mention of source of biological material.
  • Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
  1. Statistics – Pre-Grant Patent Oppositions

The Annual Journal report issued by the Intellectual Property Office i.e.  Controller General of Patents, Designs, Trademarks and Geographical Indications office report 2018-19 reveals that a total number of patents  which were published under Section 11A were around 46899 during the reporting year (2018-19), while  number of pre-grant oppositions which were filed by the opponents was around only 260, that constitutes around 0.55% of the total published applications. Also, the below data reveals since 2013 to 2016 there has been considerable growth in the trend of count of pre-grant oppositions i.e. 0.98%, 0.91% and 0.69%, respectively.

Year Number of Patent Publication Number of Pre-grant Opposition Pre-grant opposition / Patent Application Publication (%)
2013-14 31413 309 0.98
2014-15 26934 247 0.91
2015-16 41752 290 0.69
2016-17 86766 206 0.23
2017-18 46899 260 0.55

 

   Source: http://www.ipindia.nic.in/annual-reports-ipo.htm

Conclusion

Based on the analysis done on available data captured by the Indian Patent Office’s online discloses that the major grounds on the basis of which both pre-grant and post-grant opposition were filed last year were “The invention constitutes non patentable subject matter” and  the “invention lack inventive step”. Also, the formality objection ground relating to Section 8 was also noticed extensively. In the pharmaceutical field, the grounds of opposition were related to the subject matter is non-patentable under Section 3 (d) of the Patents Act. Here, the opposing party is required to prove that the claimed compound is only a mere derivative of a known substance or claimed invention is new property or new use for a known substance or of the mere use of a known process, Such machine or apparatus as claimed unless such known process results in a new product or employs at least one new reactant.

India’s patent law provides provision for both pre-grant and post-grant opposition. This provides efficient and effective method for preventing or revoking the grant of a non-eligible patent. The provision of opposition proceedings also adds to the backlog of patent prosecution at IPO. These opposition also may delay in the grant of the patents. Furthermore, a pre-grant opponent may also file a post-grant opposition after the patent grant. The opponent may also file IPAB appeal if not satisfied by IPO decision.

For any query related to opposition system in India, please feel free to contact at info@effectualservices.com.

Authors:

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com

Jyoti Chauhan (Manager)  can be reached at jyoti.chauhan@effectualservices.com

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Blog, Intellectual Property, IP industry

Re-imagining IP offices with blockchain and AI

Written by adminApril 8, 2020

Blockchain and AI are considered to be the present and future drivers of all tech domains. Over the last decade, these technologies have found their way into every industry, revolutionising the way that they work. While ‘blockchain’ is defined as an indestructible ledger of linked independent blocks that store encrypted information, ‘AI’ can be roughly defined as a man-made computing device’s ability to mimic and execute the cognitive functions of a human brain. A recent workshop organised by WIPO highlighted the need for blockchain technology in IP offices and provided ideas on how it can be used in IP asset management. Following this, many IP offices have begun to see how they can implement blockchain and AI in their practices.

Use of blockchain along with other technologies such as natural language processing, AI and machine learning fully or partially automates any processes that are human-assisted or manual. Every industry is trying to implement this technology to either reduce manual effort or increase the efficacy of their work. However, the bigger question is how the implementation of a digital ledger along with AI and machine learning will change IP office practices for innovators, investors, practitioners and examiners.

Blockchain, AI and intellectual property

While the insertion of blockchain and AI into every industry seems like a one-sided agreement, it is mutually beneficial when it comes to intellectual property. Blockchain and AI will play vital roles in the development of completely automated offices. Further, IP rights protect innovation in the blockchain, AI and natural language processing domains and the same innovations can be used to strengthen the existing way of handling intellectual property in IP offices.

The concept of distributed nodes will strengthen IP offices and augment the processing of patents, trademarks and copyright. Offices in many countries are embracing these technologies and exploring various avenues to implement the artificial brain and tamper-proof storage in every form of intellectual property.

Blockchain-redefining patent services

Generating blockchain-based records will increase the speed, responsiveness, efficiency and processing of applications. A digital ledger for patents will expedite the communication, transparency and security of records between examiners, inventors, attorneys and clients. This smart approach will improve the users’ experiences at IP offices. Blockchain and AI can help to smooth as well as to accelerate the functioning of every stage of processing a patent application, which includes:

  • filing application documents – use of blockchain will streamline registration;
  • screening applications and classification in technology groups – various technologies (eg, natural language processing, machine learning and AI) help in tech classifications and analysis of application content;
  • assigning to examiners – AI tech allows application allotment automatically to examiner based on technology, individual workload and case timelines.
  • examination stage – fast and smart search interface will evolve using AI and machine learning. It will provide assistance in exploring classification and formulation of search queries for patent and non-patent literature searches;
  • opposition and infringement suits – blockchain will help to evaluate and assess the authenticity of the claims. It will result in quicker settlement of patent lawsuits along with substantial cost savings for both the parties; and
  • licensing – smart contracts will help in the fast commercialisation of innovations. The blockchain based trading platform will help innovators catch investors’ attention. This will simplify and add value to the licensing process.

How technology will change user experience with patent, trademark and copyright

Data on digital ledgers can be used to both defend and support IP claims. Further, the automatic execution of licensing can be achieved through smart contracts. The data in the ledger is unchangeable and immutable, which is why this technology is so desirable for IP professionals.

Records on a digital ledger contain a cryptographic hash of the previous block, a timestamp and transaction data. The technology keeps a record of intellectual property and helps to identify the rightful creator or owner.

Distributed digital ledgers record any transaction or change in record in real time and in chronological order. This can speed up the pace of actions to be taken by the IP office and service user.

Challenges to standardised adoption of technology by various IP offices

In order to reap the maximum benefits from a universal business model, standardisation up to a certain level will be required (eg, establishing a common tech framework to support interoperability and fast adaptation). The problem with this is and always will be the issue of aligning multiple national and regional judicial frameworks as well as traditions.

The next main encumbrance to large-scale use of blockchain is its exceedingly high energy consumption. The cost of energising all nodes and providing for appropriate cooling means for an uninterrupted operation, make it one of the most expensive types of database to maintain.

Blockchain tech in the IP space might also face implementation challenges as developers are mostly private or semi-private enterprises, which currently lack a regulating body to ensure public interest. This may delay the speed at which we see growth in this area.

This tech could be adopted quickly if regulating authorities address the public fear of using cryptocurrency as well as raise awareness of digital record protection, immunity from hacking and interference in data accessibility rights. Further, AI itself has always scared people, as it has the potential to replace jobs or extensively alter work dynamics.

Comment

The blend of tamper-proof registration and AI is a springboard for the development of all industries. The implementation of this in a domain that protects and strengthens every other tech domain is a priority as well as a welcome upgrade.

Thus far, the path laid down by WIPO is a vital stepping stone and has intrigued many IP offices into trying to integrate this technological duo in their plans for future workflows.

While we are still far from the successful implementation of these technologies in every stage of IP rights processing, the notion of it turning into a reality does not seem as far-fetched as it did a short time ago.

For further information contact:

Ritu Tyagi
Effectual Knowledge Services Pvt Ltd
View website

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Naxly Named as a Global Leader in Big Data

Written by adminApril 3, 2020

Equal blame belongs too those who fail in their through weakness will shrinking duty the obligation of business it will frequently occur that pleasures have to be repudiated annoyances accepted the wise man therefore always holds in these matters this principle selection rejects greater pleasures, or else he endures pains to avoid worse.

Increase business productivity by 40%?

To take a trivial example, which of us ever undertakes laborious physical exercise, except to obtain some advantage from it but who has any right to find fault with a man who chooses to enjoy a that annoying consequences, or one who avoids a pain that produces.

Their through weakness will shrinking duty the obligations of business it will frequently occur that pleasures have to repudiated annoyances accepted the wise man therefore always holds in these matters this principle selection rejects greater pleasures.

Find fault with a man who chooses to enjoy a pleasure that has no annoying consequences, or one avoidspain that produces no resultant teachings of the great explorer of the truth.

Business it will frequently occur that gerater pleasures have repudiated chooses to enjoy a pleasure that has no annoying.

K. L. Dertram Irvin

Explain to you how all this mistaken idea of denouncing pleasure and praising pain was born will you a complete account of the system, and expound the actual teachings except to obtain some advantage from it? But who has any right to find fault with man who chooses to enjoy a pleasure that has no annoying consequences.

Find fault with a man who chooses to enjoy a pleasure that has no annoying consequences, or one avoidspain that produces no resultant teachings of the great explorer of the truth one who avoids a pain that produces no resultant pleasure.

Praising pain was born will you a complete account of the system expound the actual teachings except to obtain some advantage from it but who has any right to find fault.

Evaluation of AI

AI in Industries

Denouncing pleasure and praising pain was born will you a complete account of the system, and expound the actual teachings except to obtain some advantage.

  • Trasport & logistics

    128% These cases are perfectly simple and easy to distinguish. In a free hour, when our power choice is untrammelled and when nothing prevents our being able do what we like best, every pleasure is to be welcomed and every pain avoided.

  • Trasport & logistics

    128% These cases are perfectly simple and easy to distinguish. In a free hour, when our power choice is untrammelled and when nothing prevents our being able do what we like best, every pleasure is to be welcomed and every pain avoided.

  • Media & Entertainment

    128% These cases are perfectly simple and easy to distinguish. In a free hour, when our power choice is untrammelled and when nothing prevents our being able do what we like best, every pleasure is to be welcomed and every pain avoided.

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Blog, India, Intellectual Property, Patent

Expedited Examination – Making grant of patents faster in India

Written by adminApril 3, 2020

Indian Patent Office had come up with a special provision of the Expedited Examination” procedure for patent applications with Amendment Rules 2016 which got revised last year. The provision has allowed limited number of patent applications for examination and processing within an expedited period, which is roughly less than 12 months. Under the normal examination procedure, once a RFE (Request For Examination) gets filed, the patent application takes around from 2 to 3 years for getting examined and it was taking around 4-5 years for getting patent applications granted.

The Expedited Examination was earlier applicable only to 2 categories of applicants under the Amended Rules, 2016:

  1. Start-ups
  2. Applicants opting India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in the respective International Applications.

Thereafter, the Patent (Amendment) Rules 2019 became effective on September 17, 2019. The amended rules disclosing expediting examination have now become applicable for many more categories of persons, entities under few particular circumstances.

  1. Any applicant’s invention relating to particular sectors or categories as notified by the Central Government, then the applicant is eligible for applying for expedited examination.
  2. Expedited examination provision is also applicable for the applicants who are filing patent application under an specific arrangement between the Indian Patent office and a Foreign Patent Offi Thus, India will have particular arrangement which is similar to the Patent Prosecution Highway (PPH). Accordingly, the applicants will be required to meet the eligibility criteria set under the Indian patent office.
  3. Women, Government undertakings and Small entities can also apply for expedited examination:
    • A small entity (as defined in patent rules)
    • Female applicants, where at least one of the applicant is female, applying either singly, or jointly with other applicants as joint applicant, where all the other applicants are individuals i.e. a natural person.
    • Government entities as applicant, including:
      • A Government department as applicant;
      • An institution established by a Central, Provincial or State Act as applicant, which is owned or controlled by the Government;
      • A Government Company as applicant as defined in Section 2 of the clause 45 of the Companies Act, 2013; or
      • An institution as applicant who is wholly or substantially financed by the Government;

Form 18A has also been now amended to include the above grounds and the applicants. The amended new Form 18A also mentions about the documents that each of these categories of applicants need to submit while making the request for expedited examination at Indian patent office.

The following documents are mandatory to be submitted as evidence of eligibility for applying for expedited examination:

  • ISA number which has been issued by ISA (International Searching Authority), where India has been selected as ISA by the applicant and also a particular IPEA number issued by International Preliminary Examining where India has been opted as IPEA by the applicant.
  • For startups, the certificate of recognition as startup by DIPP, any other similar document in case of foreign start up as applicants that the applicant is a startup
  • The MSME (Micro, Small and Medium enterprises) certificate as evidence of registration for claiming the Indian applicant as small entity and similar document for claiming as evidence in case of foreign applicant.
  • Photo ID card in case of female applicants in both of the cases-Indian female applicant and foreign applicant where at least one of applicant is a female
  • Applicant is a natural person
  • Any one document where the applicant is a department of the Government in both of the cases where the applicant is Indian or foreign central department
  • Any document which suffices the evidence requirement in case of the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government in both of the cases where the applicant is Indian or foreign institution
  • Any document which suffices the evidence requirement in case of the applicant is an as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013):in both of the cases where the applicant is Indian or foreign institution
  • Any document which suffices the evidence requirement in case of the applicant is an that the applicant is an institution wholly or substantially financed by the Government in both of the cases where the applicant is Indian or foreign institution
  • Any request letter from head of the department of the head of the Central Government department which support that the application relates to a sector/technology domain which has been notified by the Central Government as per the Notification from the Central Government notification and documents as required by the Controller.
  • Declarations and documents as requested by the Controller that the applicant is eligible under processing system under which a patent application lies with in an agreement between Indian Patent Office and a foreign Patent Office:

Start-ups / Small entities to file Form 28 with other document submissions:

Start-ups/Small entities are now required to file form 28 along with Start- up certificate issued by DIPP in support of their start-up status.  Scenario of startups getting benefits of Expedited examination provision:

Around 1021 startups filed patent applications under this specific provision of expedited examination. A total of 351 startups have got patents granted under expedited examination process.  The IPO & DIPP has been taking many initiatives to make more speedily patent grant process. The facility can be availed only by the start-ups that meet stated criteria on payment of stipulated fees.

Few examples of patents granted within one year filed by Start-ups

One such example is a patent which was granted in less than 4 months.  This is really remarkable as the patent office only took 19 days if we don’t count  the days taken by the applicant.  It took less than a month by the Indian patent office.

There is another patent example for the Start-ups filed by Effectual legal services i.e. IN326370 granted for ‘System and method for detecting intrusion of perimeter using a plurality of sensors’.  In this case, the request for expedited examination was filed on 18.09.2018 and the first examination report (FER) was issued within approximately two months: 28.11.2018.  The reply to the FER was filed some time later on 28.12.2018 with further extended 1-2 hearings and further written hearing submissions. The patent was filed on 11.9.2018 and grant certificate issued on 29.11.2019.  It took around one year in getting grant from the filing date for the patent  case for the Start-up applicant.

The patent no. IN2885091 was granted titled ‘A process for the preparation of Apixaban’.  In this patent case, the request for expedited examination was filed on date i.e. 21.03.2017 and first examination report (FER) was launched with in less than two weeks i.e. on  31.03.2017.  The reply to the FER was also filed in lesser time duration i.e. on 04.05.2017 with a hearing scheduled on 23.06.2017, and further written submissions was made on 03.07.2017.  Thereafter patent grant certificate was issued on 12.07.2017. It took around 4 months from applying request of examination till grant of patent which is remarkable record of timeline.

Conclusion

The expedited examination provision for few chosen categories has been making grant faster and timeline for complete patenting procedure is making faster than timelines before. This will bring Indian patent office matching with the world IP practices. The Indian patent office has been coming up with many innovative approaches and the government is taking special initiatives for making patenting procedure faster. These provisions have given excellent results and many patents have been granted.

About the Author: Dr. Amit Goel, Director at Effectual Services  and Jyoti chauhan , Manager at Effectual Services can be reached at:   and  jyoti.chauhan@effectualservices.com 

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Blog, Intellectual Property, IP industry, IP Litigation, Patent

IMPACT OF COVID-19 ON INTELLECTUAL PROPERTY MATTERS IN INDIA

Written by adminApril 3, 2020

COVID-19 has created critical situation for global economy and business. India is also not an exception to this world’s health crisis, which is arising economic, health and business crisis. In order to minimize spread of novel Corono virus, the Government of India, various State Governments Bodies and Judicial Authorities are stepping in and are recommending important regulatory guidelines/ measures.

The World Health Organization (WHO) has announced COVID-19 as a pandemic, issued advisories and many notices in order to control spread of novel coronavirus (COVID-19) and thereafter many government organizations and bodies have also dispatched advisories and notices in an order to control spread the virus. The different Constitutional Courts and statutory bodies linked to Intellectual Property laws in India have declared many relief measures for the stakeholders. In this direction, Controller General of Patent, Design and Trademarks has also taken many important steps. The Indian Patent Office (IPO) and trademark registry has issued many important public notices in light of the COVID 19. Many public notices have been launched by the Intellectual property organization, Indian patent office, trademark registry  and Copyright office over the last few days in relation to adjournment, cancellation of all hearings and extension of due dates. These public notices are as under:

Public Notice dispatched by Trade Marks Registry

1 ) March 16th : Hearings Adjourned till April 15, 2020

Based on the advisory issued by Ministry of Health and Family Welfare, Govt. of India, Indian trademark registry has issued public notice on March 16, 2020 regarding adjournment of hearing falling between March 17, 2020 to April 15, 2020 related to all trademark matters. All these hearing would be rescheduled after April 15, 2020. However all other trademark hearing after 15, 2020 will remain on time.

http://ipindia.nic.in/writereaddata/Portal/Images/pdf/Public-Notice_adjounrment.pdf.

2 ) March 23rd : Filing of documents at Trademark Registry:

The Controller General of Patent & Trademarks has issued public notice on March 23, 2020 which relates to filing/ submission of documents at Indian trademark registry. The public notice reveals that:

1.  As per Section 131 of trademark act and trademark rules 109 & 110, the Applicant can file request for extension regarding submission of all documents once the situation becomes normal

2. Such request relating to extension of time will be only considered by the trademark Registrar as per trademark act.(http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Public-Notice_adjounrment.pdf )

Public Notice issued by Copyright office

The Registrar of Copyrights has declared that all hearings related to Copyright matters falling between March 17th 2020 and March 31st 2020, would be adjourned and will be rescheduled later.

http://copyright.gov.in/Latest_Notice39.aspx.

Public Notice dispatched by the Patent Office

1 ) March 19th : Patent Hearings

1. As per advisory launched by Ministry of health, all the patent hearing (in person) related to Patents and Designs matters would be converted to Video Conferencing (VC) mode which were scheduled on or before April 15, 2020. Further, in case where the applicant would be not able to attend the VC hearing, the hearing may be adjourned for a date later than April 15, 2020. It also discloses clearly that, hearings scheduled post-April 15, 2020 shall remain unchanged.

2. The Indian patent office further declares that any delay in transmitting or resubmitting documents would be condoned under the Patents Act, 1970 or the timeline would be extended only on applying by a petition for such condonation of delay or extension. Such extension of time should not be later than one month from the date when COVID19 outbreak ceased to exist as per sub rule (6) of rule 6 of the patent rules.

3. Such necessary directions issued by CGTDM has been circulated to all branch offices related to all patent matters

http://ipindia.nic.in/writereaddata/Portal/News/668_1_PUBLIC_NOTICE.pdf.

2 )  March 25th : Updated notice for Patent matters

 The IPO has issued public notice on 25th march, 2020 which reveals that:

1. All Video Conference hearings falling between 23rd March 2020 and 14th April 2020 stands cancelled as per advisory issued by ministry of health and lockdown situation prevailing in the country. Later on, the next dates of rescheduled hearings will be communicated.

3 ) 25thMarch: Updated notice for IP matters issued by CGPDTM

Extension of Timelines related to Patent, Designs, Trademark and Geographical Indication matterAll the patent Offices, design offices, trademark registry, copyright office and GI offices along with all branch offices at Delhi, Mumbai, Kolkata, Ahmedabad and Chennai which are under administrative control of Office of CGPDTM, i.e. will remain shut down for 21 days i.e. effective from March 25, 2020 i.e. until April 14, 2020.

All the due dates, timelines / periods related to all IP matters administered by the Office of CGPDTM in regards to completion of various acts / activities, filing of any reply/document, payment of fees etc. shall be the date on which the Office will resume functional.

http://ipindia.nic.in/writereaddata/Portal/News/673_1_Corrigendum_Public_Notice_25032020.pdf.

Extension in Physical Filings:

The Sue Motu Cognizance of difficulties because of COVID-19 was taken by the Supreme Court of India on March 23, 2020.The Court issued notice that the lawyers / litigants do not need to come physically to file such documents:

The Hon’ble Court declared that the duration in filing petitions, applications, suits, appeals, and all other proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not, will be extended effective from March 15, 2020.

This order would be binding on all Courts, Tribunals and statuary bodies/ authorities

Extension of Stay Orders:

Under the effect of Suo Moto cognizance because of COVID-19 outbreak, the Delhi High Court passed an order dated March 25, 2020, stating that

1. In all pending matters in front of before Delhi High Court as well as subordinate courts, wherein interim orders were subsisting as on March 16, 2020 and expired or will expire thereafter, would be now extended till May 15, 2020  depending on next order.

2. the party would be at freedom to seek appropriate relief in case the above-mentioned extension to the interim order causes any hardship of an extreme nature to any party

About the Author: Dr. Amit Goel, Director at Effectual Services   and Jyoti chauhan , Manager at Effectual Services can be reached at:   and  jyoti.chauhan@effectualservices.com 

 

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