Procedural relaxations in patent filing

PROCEDURAL RELAXATIONS IN PATENT FILING

The Parliamentary Committee Report on evaluating the IPR regime in India dated 23rd July, 2021 has been tabled in both Houses of the Parliament. The Report has been the subject of study amongst various IP scholars. The Report has made several recommendations regarding amendment of substantial provisions to the Patents Act. (Discussed here and here ). Apart from the above mentioned amendments to definitions and patentable subject matter, several changes have also been made to the procedural aspects of the statute. This article shall discuss the highlights of the procedural amendment recommendations and analyse the same.

HIGHLIGHTS OF THE AMENDMENTS SUGGESTED

1. The existing Section 122 (2) penalizes anyone who provides false information under Sections 100 (5) and 146. Accordingly, the person may be imprisoned for upto six months, in addition to being charged a monetary fine. The Report recommends that the Central Government must study the stringency of the provision and may come up with a proposal to replace the imprisonment entirely, with a higher and more substantial monetary penalty.
2. At present, Section 11B read with Rule 24B of the 2003 Rules states that within 448 months of filing a patent application, a request for examination has to be filed. The Report opines that this period is extensive and suggests that a shorter time frame would be more appropriate to avoid unnecessary delays in the process of examination of applications and grant of patents.
3. The next recommendation focussed on the lack of flexibilities in the Patents Act, 1970. The Act stipulates strict timelines for the compliance of various statutory requirements in the examination and grant process. Under Section 21(1) an application filed for the grant of a patent will be deemed abandoned if such compliance is not made. The Report states that several other patent offices offer their applicants a second chance to proceed with their application after levying a monetary penalty for the delay in compliance. The Committee believes that the introduction of flexibility in the process would benefit the patent ecosystem in our country.
4. Section 104 concerning the jurisdiction of courts for patent infringement suits says that suits under Section 105 and remedy under Section 106 should not be instituted in a court inferior to a district court. The Report recommends the amendment of Section 104 to promote establishing alternative dispute resolution (ADR) mechanism and setting up zonal IPR mediation or arbitration centers at the district level.
5. Finally, the Report also recommends the upgradation of the Indian Patent Office Website to make it user and accessibility friendly, to improve the patent filing and search facilities.

ANALYSIS

The suggestion to make the norms of patent filing less stringent must be welcomed. The author of this article agrees that minor lapses in procedure and/or compliance of time period stipulation should not result in forfeiture of a patent application filed. Relaxation of the procedure by substituting abandonment with a late submission fee would make the process more encouraging to present and prospective patentees.

The suggestion to shorten the time period for filing a request for examination seems like a step in the right direction, it is not a comprehensive solution in itself. What remains unascertained is the different changes that need to be undertaken at a policy level, to ensure compliance with such a contracted time frame. Statutory timelines as a practice contain room for condonation of delay on reasons “as the authority may deem fit”. Furthermore, the patent office is like any other government department and suffers from red tapism and slowed down activities due to structural obstructions, including an excessive workload and inadequate personnel.

While speedy processing of patent applications and prompt granting thereof is a positive phenomenon, there is an important factor to be mindful of. A myopic approach that focuses on speed and numbers would mean the creation of a pseudo quota-fulfilling system and it would be easier to allow a bad patent than to spend time justifying/giving reasons as to why a patent must be denied. If a legislative change is brought in with a focus on speedier process instead of addressing the other structural issues that plague the process of patent examinations, then it is doubtful that it would lead to any fruitful change.

The lack of focus on Research and Development (R&D) leaves a gaping void in the Report. R&D spending, and the capacity to build infrastructure necessary to improve the Indian patent regime needs to be examined and amped up for a real enhancement of our IP administration. While the focus on improving the process of filing patent applications and making it accessible is important, it is hard to visualise their positive impact on innovation. Monopoly incentives derived from patent protection are only one part of our patent ecosystem, and cannot provide all the incentive required for innovation. It is also an aspect that figures mostly at the end of the innovation cycle and not at the beginning. In that, without R&D capacity, there would simply be a lack of an environment that helps explore gaps in technology and create subsequent socially beneficial inventions.

The Report while discussing Section 104 has recommended the idea of specialised IPR mediation or arbitration which while attractive at first glance is in spirit the same as the Intellectual Property Appellate Board (IPAB). The IPAB was a specialised IP forum which however was plagued with several issues that led to the sounding of their death knell, as discussed in an earlier post. Moving to the next point, even if ADR is touted to be the harbinger of speedy justice, there is no guarantee, and one can only hope for the same. Today, arbitration has evolved to become an expensive and time-consuming affair, while any mediation that is voluntary is not binding on the parties, Given this, it seems more probable that the parties would much rather prefer to approach the court and try their fate in litigation. Mere creation of institutional bodies without paying attention to lessons to be learnt from the failure of similar institutions in the past does not seem to be prudent policy making.

Lastly, the recommendation on improving the Patent Office website is a much welcome suggestion. Should such an upgradation happen, apart from removing accessibility barriers, the site should also be designed to allow for patent filing and search facilities in Indian languages apart from English, thus broadening its reach.

CONCLUDING THOUGHTS

In all, it is evident that the impetus to undertake these changes comes from the desire to increase patent filing in India. While the recommendations may be appreciated for trying to induce some flexibility into the Patents Act, it still takes a very heavy top-down approach. It focuses too heavily on statutory change rather than substantial policy reform to improve the overall patent regime. The Report fails to recognize that mere numbers do not create a robust ecosystem of innovation or a stronger IPR regime. The Report seems to associate correlation with causation in making these recommendations and it leaves many blanks when it comes to justifying why such amendments to the Act are necessary.