7 June 2016 // Special Edition // Indian Intellectual Property News
Conflict between Indian Patents Act and Biological Diversity Act in relation to grant of Patents relating to biological resources when such biological resources have an origin from India
The Biological Diversity Act, 2002 (BDA) was passed with objectives to provide equitable sharing of benefits arising out of the use of biological resources and knowledge. Section 6 of BDA forbids an application for any intellectual property right in or outside India, for invention based on research arising out of biological resources obtained from India, without prior approval of National Biodiversity Authority (NBA). However, some relaxation is provided in the form of proviso to Section 6 of the Act which states that if a person applies for a patent, permission of the NBA may be obtained after the acceptance of the patent but before the sealing of the patent.
The major issue of the conflict between the BDA and the Indian Patents Act is noncompliance of the statutory time limit of 90 days by NBA in grant of permission for patent applications which utilizes biological material obtained from India. NBA takes many years in issuance of such permission, which adversely affects the patent rights of the applicant.
Recently, the Draft Patent (Amendment) Rules, 2015 added fire to the already existing conflict between both the two Acts with a clause that stated “In case the applicant has not submitted necessary permission from the competent authority within the period as prescribed under Rule 24B and 24C to put the application in order for grant under Section 21 of the Act, the Controller may pass an appropriate order after providing opportunity under Section 15.”. Read more...
Flip Flops of Indian Patent Office on Guidelines for Examination of Computer Related Inventions (CRIs)
The ambiguity as to the “requirement of novelty in hardware as a precondition for grant of the Computer Related Inventions (CRIs)” and differing interpretations, particularly of the expression “computer program per se” has made Section 3(k), one of the most controversial provisions of Indian Patents Act.
To avoid the application of different standards or contrasting approaches for examination of CRIs by different Examiners i.e., to bring uniformity in examination of the CRIs, draft guidelines for examination of CRIs was published in 2013, wherein a specific requirement to pinpoint novelty and inventive step in the hardware features was specified.
Following release of draft guidelines, stakeholders, in a meeting with Officials of IPO, opposed the draft guidelines especially the requirement of novelty in hardware. Consequently, in August 2015, IPO came out with finalized guidelines, which clarified that a novel computer program with a known hardware going beyond the normal interaction with such hardware and affecting a change in the functionality may be considered patentable.
On the account of oppositions mounted by Indian software industry and NGOs this time, the guidelines were put on hold in December 2015, till contentious issues were resolved. Finally, after another meeting with the stakeholders on January 19, 2016, IPO released revised guidelines, wherein the requirement of “novel hardware” in the test to determine patentability of CRIs was again introduced. The revised guidelines again confer a wide discretion in the hands of individual Controllers/Examiners to apply their own standards in examining computer related inventions.
So, the scenario of patentability of CRIs in India can be summed up by the expression “BACK TO SQUARE ONE”. Read more...
No Patent Agent Examination in India – what’s transpiring!
Stakeholders in the Indian patent scenario are perplexed with one development or rather non-development related to the field – the conduct of Patent Agent examination. No reasons seem to be forthcoming as to why the Patent Agent examination has not been conducted for the last three years, and further, the Indian Patent Office has shown no inclination to conduct the same in the near future.
On one hand, we are witnessing renewed emphasis of the Indian Government to enhance the R&D activity in India, as a result of the various schemes launched and on the other hand, selection of new Patent Agents for facilitating protection of such R&D has been put on an indefinite and unreasoned hold.
Further, the recruitment of Patent Examiners has been fastened along with proposals to streamline the process of examination of patent application, which should result in increasing the workload on the current lot of practicing Patent Agents. As a fall-out of the current situation, chances are that quality of the work being performed by the Agents will go down.
The most plausible reason that seems to be stopping the Indian Patent Office from conducting the Patent Agent examination seems to be the decree of Madras High Court holding Advocates with science degrees competent to be enrolled as Patent Agents, without qualifying the statutory examination. Sources indicate that the impugned decision has been appealed before the Hon’ble Supreme Court, thus, contributing to the impasse.
Whatever be the reason, it is in nobody’s interest that the examination for selection of Patent Agents is not being conducted, and it is high-time, the Indian Patent Office moves forward to conduct the examination. Read more...
Patent Term Extension in India: The Need of the Hour!
That the official Indian Patent machinery is plagued with delays has become common knowledge to Applicants and IP professionals all over the world. Official estimates indicate that a patent grant, on an average, takes almost six years. However, instances wherein half of the patent term gets exhausted before a patent gets granted are also fairly common. To accentuate the delays further, regulatory authorities such as National Biodiversity Authority, also take their own time in granting approvals. In the case of pharmaceutical products, the situation turns grim as despite a product being patented, it cannot be marketed in want of timely regulatory approval.
In the Nitto Denko case, when a patent applicant, highlighted the above-said anomalies in a writ petition before the Hon’ble Delhi High Court, the Court directed the Indian Government to appoint a Committee to look into the issue of delays. The terms of reference of the Second Committee included considering the suitability of having patent term extension to compensate for the time lost in processing of the application. The idea was discussed and subsequently rejected.
However, of late, developments related to regional free trade agreements such as Trans-Pacific Partnership Treaty (TPP) and Regional Comprehensive Economic Partnership (RCEP) have reignited the debate on patent term extension. Both the agreements hint at providing patent term extension on account of ‘unreasonable delays’ in processing patent applications. Despite no statutory provisions, India will be compelled to make way for patent term extension, on account of it being a member of the RCEP.
‘Unreasonable delays’ in processing of patent applications should warrant a discussion amongst policy makers about the proposal of patent term extension. Read more...
Reforms in Indian Patent System and Procedure
Of late, noticeable reforms have been witnessed in the substantial and procedural aspects of Indian Patent Law, which apart from improving IPO’s interface with the stakeholders, has also embarked on the problems encountered by stakeholders, chief amongst which are the delays in the examination and grant of the patent applications and lack of uniform practice.
The Government of India has taken a host of welcome initiatives including but not limited to, issuing of guidelines, augmentation of infrastructure and manpower in IPO, facilitating lesser official fee for small and medium enterprises, appointment of facilitators for start-ups, enhancing bilateral co-operation with other countries and publication of the draft Patents (Amendments) Rules, 2015. The overriding objective of these developments is to maintain a balance between India’s developmental and public policy concerns and to bring all the four Indian Patent Offices on par with other jurisdictions in the world in terms of quality of examination and time taken for grant of a patent.
However, despite the recent initiatives taken by the Government and the IPO, there is a further need for development in Indian Patent System in terms of qualitative examination, expedition in prosecution of pPatent applications at all levels, sharing of resources with foreign Patent Offices and inadequacy of protection for IPRs such as Utility Models and Trade Secrets. Therefore, IPO has a long way to go to fill the lacunae in current Indian Patent Law and Practice. Read more...
Trade Dress Protection under Trademark Regime: An analysis
The Indian courts have given protection to trade dress through common law remedy of “passing off”, even before the new Trade Marks Act, 1999 came into force, which provided statutory protection to the trade dress. Largely, trade dress protection is governed by the same set of laws that protects unregistered trademarks. The main principle followed by Indian courts is that, although there is no monopoly in colour, a defendant who copies the colour scheme or get-up or trade dress which is likely to confuse the customers would be prohibited from such use.
Further, the case of passing off has to be decided on the comparison of broad similarities and the test is always from the point of view of an unwary purchaser. Delhi High Court in Colgate Palmolive Co. v. Anchor Health and Beauty Care laid down that “if the first glance of the article without going into the minute details of the colour combination, get-up or layout appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.”
So, the courts in India have rightly applied test of ‘average man of ordinary intelligence’ to adjudge the overall similarity of products in cases of passing off, as a large section of populace, being illiterate or poorly educated in relation to differentiation of product coming from different sources, are primarily guided by the colour scheme and packing of product. Read more...
Scope and Implications of Patent (Amendment) Rules 2016
The Government of India has brought into force the Patents (Amendment) Rules 2016 taking effect from May 16, 2016 (‘the Rules’) that modify the existing Patents Rules, 2003. This amendment follows the publication of the draft patents rules in November 2015 to which comments had been invited from stakeholders. The amended Rules introduce substantive amendments to the procedural as well as substantive issues, which will have long-standing implications on patent practice and procedures in India. Read more...