— Amit Aggarwal, Co-Founder and Director, Effectual Services
The famous legal maxim – “Justice delayed is justice denied”, is unequivocally applicable in case of patents. An Intellectual Property (IP) owner is unable to enforce his patent unless it is validly granted by the Indian Patent Office – be it Trademark, Design or a Patent. This means that an IP owner is at potential risk of his idea being copied, until the point his IP is actually granted by the Indian Patent Office.
Not in the too distant past, the average time of grant for patents was 5-6 years (60-72 months). This was perceived as a deterrent by many IP filers, who would rather take a risk of launching a product for becoming an early mover in the market, rather than going down the road of getting a patent to protect the product before launch. Also, some of the technologies change pretty fast, having such a long patent prosecution time is particularly risky for such technologies, as, by the time the patent is granted, the technology is already replaced by another, a perhaps more promising one, technology thereby rendering the patent useless.
However, the Indian Patent Office seems to have recognized this a couple of years back and is consistently trying to decrease the grant times. According to latest Annual report available from Indian Patent Office website – During 2016-17, the number of patent applications examined increased by 72.2%, the number of grant of patents increased by 55.3% and final disposal of applications increased by 37.7%, as compared to 2015-16. The pendency of examination of trademark applications was brought down from around 14 months to less than 1 month in January 2017. The pendency in the examination of new design applications was reduced from 8 months in March 2016 to one month in March 2017.
Our research also corroborates the same fact, the average time to grant for patents filed in the year 2013 was around 63 months, which steadily decreased to 51, 37, 23, 14 and 8 months for patents filed in the year 2014, 2015, 2016, 2017 and 2018 respectively. Although not every patent that was filed in recent years, such as 2018 and 2017, would have been granted by now, there is no doubt that the pace for granting patents, and other types of IP, has increased considerably. In fact, in the year 2017, a patent was granted within a record time of 113 days, using the expedited examination provision. There were 15 other applicants, who were granted patents within 113-300 days in the year 2017.
All of this is attributed to continuous changes that were introduced to the Indian Patent system. Broadly, these changes include – Legal measures, Procedural changes, Special Provisions, and the addition of manpower.
The Legal measures included, among others, the introduction of amendments to Indian Patent Rules (2003) in the year 2016. The amendment made provisions for expediting Patent examination for patents filed by Start-ups and other entities who have selected India as International Search Authority or International Preliminary Examining Authority. Similarly, amendments were made to Indian Trademark Rules 2002, in the year 2017, such as reduction of the number of Forms from 74 to 8, and one application Form for all types of trademark applications.
The procedural changes include a variety of automation implemented by the Indian Patent Office including, Auto-allocation of Requests for Examination of patent applications. The system has removed the problem of different time of examination at different office locations. Also, the Indian Patent Office has discontinued Paper mode of communication for examination reports. Hearing notices are also sent through e-mail, which in turn helps in speeding up the procedures. The process relating to generation and issuance of Patent grant certificates has also been fully automated.
Further, some special provisions, are under consideration, for example, the Department of Industrial Policy and Promotion (DIPP) has floated draft rules to further amend the Patents Rules (2003), for expediting examination of the patent applications having at least one-woman inventor listed.
Additionally, the Indian Patent Office has also increased the workforce by hiring more Patent Examiners and promoting the experienced Examiners as Controllers.
As commendable as it is, the initiative to expedite the patent grant procedure is far from complete. There seem to be many future initiatives in the pipeline which, as per the Annual Report by Indian Patent Office, are yet to be implemented.
For example, launching SMS Alert service to stakeholders regarding Examination reports along with time-bound actions to be taken by them, introducing e-verification of signature in addition to the present mode of digital signature, introducing facility for hearing with the Controller through video-conferencing from the applicant’s location, and developing Mobile App for providing IP information and service to stakeholders.
All these initiatives are aimed at making the system more efficient, and in turn, increase the pace at which patents are granted in India.
