In recent years, India has attracted worldwide attention with the continuous evolution of its IPR ecosystem. The overall strategy of bringing in new policies and progressive amendments clubbed with rapid implementation are some of the dominant factors responsible for this attention. Accordingly, a gradual increase has been witnessed in the number of filings of patent applications in India over the years. Be it the national IPR policy, regular amendment of rules and provisions, benefits to start-ups, evident efforts to expedite the patent examination process, or encouraging transparency at the patent office using technology, the government is improving the IPR ecosystem to facilitate the process of doing business in India. Like any other jurisdiction, there are certain provisions in India’s patent law which are unique to India only. This article aims to familiarize readers with such unique provisions. Foreign filing licence One such unique provision relates to the requirement of the foreign filing licence (FFL). FFL is to be sought if at least one of the inventors is a resident of India at the time of conception of the invention and the applicant wishes to first file a patent application outside India. It is pertinent to note that the Indian Patent Law does not define ‘inventor resident in India’ and therefore, the Indian Patent Office (IPO) checks compliance with the above-mentioned requirement based on the address of the inventors. Along with a request for FFL, the applicant is expected to provide the IPO with a brief write-up on the invention describing the scope and the nature of the invention. In response to the request for FFL, the IPO has to pass its judgment on the issuance of the FFL within 21 days from the date of request. The purpose of this provision is to provide an opportunity to the IPO to ensure that the invention going outside the country does not relate to sensitive technologies, such as defence or atomic energy, which can be detrimental to national security. Alternatively, applicants can first file an application in India and wait for six weeks before filing a foreign application claiming priority from the Indian application. During this duration of six weeks, the IPO informs the applicant if they have any objection with regard to the content of the patent application. If the applicant does not receive any communication from the IPO within this duration, they are free to file corresponding applications in any foreign jurisdiction, including PCT.
National phase entry and voluntary amendments
Every year, most foreign applications enter Indian jurisdiction through the PCT route. Earlier, the Indian Patent Law did not allow any amendments to be made to the specification at the time of national phase entry. However, in 2016, the relevant provisions were amended to allow the deletion of claims at the time of filing a national phase application. The amended provisions allow the applicant to save excess claim fee (approximately US$25 per extra claim) that is otherwise to be paid for each claim exceeding 10 claims in India. For example, the applicant can consider cancelling claims directed towards a subject matter that is non-patentable in India, such as a computer program product or a method of treatment. Therefore, the applicant ends up saving the excess fee while simultaneously quickening the prosecution process by deleting nonpatentable claims. Apart from the deletion of claims, any other amendments, for example, merging of two or more claims, addition of new claims, and any corrections in the claim language, are still not allowed at the time of filing the national phase application. Such amendments can be filed as paid voluntary amendments immediately after filing the national phase application. Further, while filing the voluntary amendments, applicants should bear in mind that voluntary amendments, which broaden the scope of claims or completely replace the claims-on-record or are not supported in the specification, are not allowed.
Divisional applications
The practices relating to divisional applications in India are also somewhat different compared with other major jurisdictions. In India, a divisional application can be filed either in response to an objection for lack of unity or voluntarily, but only before the grant of its parent application. Further, there is no procedure prescribed in law for the IPO to issue a prior “notice of allowance” or “intention to grant” for an application to the applicant. Therefore, a sudden grant of a parent application blocks the opportunity for the applicant to pursue a divisional application. Accordingly, divisional application(s) should be filed at the earliest opportunity or at least while filing a response to the First Examination Report (FER) because the patent application can thereafter be directly granted if the response successfully addresses all the objections raised in the FER. In case any objection remains outstanding after the response, a notice for oral hearing is issued, which practically extends the time window to file a divisional application. Regarding the content of divisional applications, the law mandates that a divisional application is considered valid only when there are multiple inventions disclosed in the parent application and the claims of the first application and the divisional application are distinct. Otherwise, the IPO may raise an objection of double patenting at the time of examination of the divisional application.
Section 8 of the Indian Patents Act
Once an application is filed, it is necessary to ensure compliance with Section 8 of the Indian Patents Act. Section 8 read with Rule 12 of the Patent Rules imposes two requirements on applicants. The first requirement arises from Section 8(1) read with Rule 12(1), 12(1A), and 12(2) that requires applicants to inform the IPO about the details of all related applications on a voluntarily basis and also when asked by the IPO through an examination report or a hearing notice. The details are to be provided to the IPO at the time of filing the Indian patent application or within six months from the filing of the Indian patent application. After that, the details can be provided within six months from the filing of a related application, if any, filed after filing in India. The details include country name, application date, application number, application status, publication date, and grant date. The second requirement arises from Section 8(2) read with Rule 12(3) that requires the applicants to submit: (i) claims allowed and (ii) information relating to objections raised in related applications for all/major jurisdictions, only when specifically asked by the IPO through an examination report or a hearing notice. The documents under the second requirement are to be submitted within six months from the date of receipt of such request from the IPO. It is pertinent to note here that cited references are not required to be submitted to the IPO on the lines of the IDS requirement of USPTO. Rather, only the granted claims and objections raised in office actions, need to be provided to the IPO to comply with the present requirement. Last year, IPO issued an office circular directing examiners to access the WIPO Centralized Access to Search and Examination (CASE) system and use the system to search for patent applications at other participating offices and to retrieve the documents that are made available by those offices. IP5 offices, i.e. US, EP, JP, KR, and CN are the Providing Offices of WIPO CASE and therefore, the search and examination reports of the applications examined by these patent offices are accessible by the examiners at IPO. In view of the aforesaid office circular, IPO has significantly reduced issuing objections asking for the documents under Section 8(2).
Working statement
Another unique provision in the Indian Patent Law is the requirement of working statement. The Indian Patent Law mandates that the applicant must submit a working statement reflecting the extent of working of the patent every year. This is to ensure that the patent is being commercially used to the fullest extent and serving its intended purpose. If the patent is not worked in India for three years from the date of grant of the patent, it opens the window for persons interested to seek compulsory licence from the patentee to work the invention. Therefore, in order to avoid any undesirable consequences, it is recommended that the applicants diligently comply with this provision. However, the applicants usually find it difficult to furnish required information for multiple reasons, such as confidentiality of data involved and complexity in determining the exact extent of working of the invention. Recently, the Delhi High Court while disposing a writ petition directed the government to effectuate necessary amendments to the Patent Rules to regulate the working statement requirement in India. In compliance with the directions of the Hon’ble Court, the government has proposed to simplify the format of working statement to some extent. Considering that the consultation with stakeholders is still ongoing, it would be fair to expect that the final format of the working statement will further be simplified with the intent of ensuring convenience to patent owners in times to come. India has a TRIPS compliant, equitable, robust, and dynamic IPR regime. As this regime goes through changes to meet the demands of a new age, the importance of constructive participation of stakeholders should be acknowledged to achieve the objective of harmonious synchronisation of local IP laws with everchanging needs. Considering the persistent efforts of stakeholders that have been witnessed in recent years, it is reasonable to expect an improvement in the IP ecosystem conducive to innovation and creativity not only in terms of IP awareness and creation, but also in terms of commercialisation and enforcement.
Unique Patent Law Provision in India by Manisha Singh & Joginder Singh
The article was first published in MIP –AIPPI edition